Paper No. 92
`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 No. IPR2015-010471
`U.S. Patent No. 7,490,151
`
`––––––––––––––––––
`
`PETITIONERS’ PARTIAL OPPOSITION TO
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`
`1 Apple Inc. and Black Swamp IP, LLC, which filed a petitions in IPR2016-00063
`and IPR2016-00167, respectively, have been joined as Petitioners in the instant
`proceeding.
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`

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`IPR2015-01047
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`TABLE OF CONTENTS
`
`I.
`II.
`
`Introduction ................................................................................................ 1
`Background ................................................................................................. 1
`A.
`The Apple IPRs .................................................................................. 1
`B.
`The RPX IPRs .................................................................................... 2
`C.
`The Microsoft IPRs ............................................................................. 3
`D.
`The Mangrove IPRs ............................................................................ 3
`E. Mangrove’s RPX Investments ............................................................ 4
`III. VirnetX’s Motion for Additional Discovery Should Be Denied ............... 5
`VirnetX Has Failed to Show Good Cause for Additional Discovery of
`A.
`Post-Institution Information ................................................................ 5
`VirnetX Has Also Failed to Show Good Cause for Additional
`Discovery of Pre-Institution Information ............................................ 6
`C. Mangrove’s Voluntary Discovery Responses Moot Much of
`VirnetX’s Motion, the Balance of Which Should be Denied ............... 8
`1.
`VirnetX’s Mangrove RFPs Are Largely Moot, and Should be
`Denied Otherwise ..................................................................... 8
`VirnetX’s Mangrove Deposition Requests Are Largely Moot,
`and Should be Denied Otherwise ............................................ 11
`VirnetX’s Discovery of RPX Should be Denied ..................... 14
`3.
`IV. Conclusion ................................................................................................. 15
`Exhibit List .......................................................................................................... 17
`Certificate Of Service ......................................................................................... 21
`
`B.
`
`2.
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Applications in Internet Time, LLC v. RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) ...................................................................... 6, 8
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013) ...................................... passim
`
`Nuseed Americas Inc. v. BASF Plant Sci. GMBH,
`IPR2017-02176, Paper 20 (PTAB May 4, 2018) .............................................. 13
`Power Integrations, Inc. v. Semiconductor Components Indus., LLC,
`926 F.3d 1306 (Fed. Cir. 2019) .......................................................................... 5
`Ventex Co. v. Columbia Sportswear N. Am., Inc.,
`IPR2017-00651, Paper 148 (PTAB Jan. 24, 2019) ......................................... 6, 8
`Wi-Fi One, LLC v. Broadcom Corp.,
`878 F.3d 1364 (Fed. Cir. 2018) (en banc) ...................................................... 5, 6
`Statutes
`35 U.S.C. § 315(b) ......................................................................................... passim
`35 U.S.C. § 316(a)(5) .............................................................................................. 6
`
`
`
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`I.
`
`Introduction
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`U.S. Patent No. 7,490,151
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`There is no secret conspiracy between Mangrove and RPX or Apple. As
`
`VirnetX itself recognized in 2015, Mangrove initiated these proceedings as part of
`
`a short-selling investment strategy: it “pursued short positions in the publicly
`
`traded stock of … VirnetX Holding Corporation,” and filed the present IPRs “to
`
`encourage such a drop in VHC’s stock price.” Paper 9, 5. When VirnetX’s “abuse
`
`of process” complaints failed to prevent institution (see Paper 11, 9), it promptly
`
`forgot its prior explanation and came up with a new one: a supposed conspiracy
`
`involving RPX and Apple. See Paper 48, 52–54; Paper 90 (“Mot.”), 6–13.
`
`VirnetX’s conspiracy theory has no basis in reality. Mangrove’s acquisition
`
`of some publicly-traded shares of RPX did not make RPX a real party in interest or
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`privy to Mangrove. The evidence already in this record coupled with Mangrove’s
`
`voluntary productions and responses prove there was no connection between
`
`Mangrove and RPX that could support a RPI/privity theory. VirnetX cannot show
`
`good cause for its remaining requests and its fishing expedition should be denied.
`
`II. Background
`
`A. The Apple IPRs
`
`VirnetX sued Apple on the ’135 and ’151 patents twice: first in 2010, and
`
`again in 2012. Apple filed inter partes reexamination requests against both patents
`
`in 2011, which remain pending largely as the result of an unprecedented campaign
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`of delay by VirnetX. See Paper 59, 4–5. After the AIA’s inter partes review
`
`provisions came into force in September of 2012, Apple filed IPRs against the ’135
`
`and ’151 patents within one year of having been served with VirnetX’s second
`
`complaint. See IPR2013-00348, -349, -354. VirnetX successfully argued that
`
`§ 315(b) runs from the first complaint, not just any complaint, and the Apple IPRs
`
`were denied on December 13, 2013. E.g., IPR2013-00348, Paper 14.
`
`B.
`
`The RPX IPRs
`
`RPX provides a variety of patent-related services to its clients. See Ex. 2047,
`
`6–7. RPX pre-emptively purchases patents to avoid lawsuits, settles with litigants
`
`on behalf of its members, and occasionally challenges patents of dubious quality at
`
`the Patent Office. See id. But VirnetX cites no instance of RPX ever using
`
`anonymous third parties to file IPRs on its behalf, and Petitioners know of none.
`
`In 2015, RPX apparently concluded that VirnetX’s patents were of dubious
`
`quality, and filed IPRs challenging them. E.g., IPR2014-00171. Far from hiding its
`
`relationship with its clients such as Apple, RPX filed (under seal) its addendum
`
`agreement with its petitions. See, e.g., IPR2014-00171, Paper 1, 2–3 (Nov. 20,
`
`2013); Exs. 1072–73. RPX argued that, despite the agreement, it was the only RPI:
`
`it had “sole discretion over and controls the decision of which patents to contest,”
`
`the “conduct … and the decision to continue to terminate,” and “for payment of
`
`any expenses of preparing and filing petitions ….” IPR2014-00171, Ex. 1072. The
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`Board disagreed—it found that Apple’s compensation to RPX under the
`
`agreement, along with related interactions between the parties, suggested that RPX
`
`was acting as Apple’s proxy and RPI—and the RPX IPRs were denied under
`
`§ 315(b) on June 5, 2014. E.g., IPR2014-00171, Paper 49.
`
`C. The Microsoft IPRs
`
`Apple was not the only technology company sued by VirnetX. After
`
`Microsoft Corporation was repeatedly accused of infringing VirnetX’s patents, it
`
`responded by filing its own IPRs against the ’135 and ’151 patents. See IPR2014-
`
`00558, -610. The ’135 IPR was denied as time-barred, but the ’151 IPR and others
`
`were instituted on the merits. VirnetX quickly settled with Microsoft and the IPRs
`
`were terminated on January 26, 2015. E.g., IPR2014-00610, Paper 19.
`
`D. The Mangrove IPRs
`
`On January 7, 2015, several weeks before the Board terminated Microsoft’s
`
`IPRs, hedge fund manager Kyle Bass announced his plan to begin shorting drug
`
`makers’ stock and then challenging their patents (Ex. 1054; Ex. 2022) and filed his
`
`first IPR on February 10, 2015. See IPR2015-00720. Seeing a similar opportunity,
`
`Mangrove “shorted” the stock of VirnetX’s parent company (Ex. 2004), and, on
`
`April 14, 2015, filed IPRs against the ’135 and ’151 patents. See Ex. 1049, 6–7.
`
`Mangrove leveraged the past success of Microsoft’s IPRs—its petitions rely on the
`
`same expert, Dr. Roch Guerin, and use the same patentability challenge included in
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`the Microsoft’s petitions. Compare, e.g., Paper 1 with IPR2014-00610, Paper 1.
`
`By contrast, the Apple and RPX IPRs advanced grounds based on different prior
`
`art and used a different expert, Mr. Michael Fratto. Compare, e.g., IPR2013-00354,
`
`Paper 5 with IPR2014-00173, Paper 1.
`
`Prior to filing the IPRs—and through institution on October 7, 2015—
`
`Mangrove is aware of no communications whatsoever with RPX regarding
`
`VirnetX, VirnetX’s patents, or Patent Office proceedings. See Ex. 1049, 2–4.
`
`E. Mangrove’s RPX Investments
`
`Few hedge funds have a single investment strategy, and many pursue a
`
`“diversity of strategies.” See Ex. 2015, 3. Mangrove
`
`
`
`
`
`
`
` Ex. 1051, 2; see also
`
`Ex. 1055; Ex. 1056. Mangrove slowly acquired RPX stock through public trades
`
`and continued its passive investment strategy through late 2015. Ex. 1051, 2–3; Ex.
`
`1052, 8. By early 2016, however, Mangrove was unhappy with RPX’s
`
`performance and began an activist campaign to improve it. Ex. 1052, 8; Ex. 2055.
`
`On March 3, 2016, Mangrove met privately with RPX’s CEO to voice frustrations
`
`with RPX’s acquisitions and “excessive employee compensation.” Ex. 1052, 8. On
`
`March 17, 2016, Mangrove delivered a public letter expressing “great displeasure”
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`with RPX’s performance. Ex. 2055, 1. Mangrove had offered to resolve its dispute
`
`“behind the scenes” and “without resorting to a public campaign to gain director
`
`representation,” but issued the public letter so shareholders could “compare
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`[Mangrove’s] common sense ideas to [RPX’s] dismal track record.” Id. RPX told
`
`Mangrove to “‘sell the stock’ if [Mangrove] didn’t like management’s decisions.”
`
`Id. By May 16, 2016, Mangrove owned around 6% of RPX’s stock. Ex. 1052, 2.
`
`III. VirnetX’s Motion for Additional Discovery Should Be Denied
`
`A. VirnetX Has Failed to Show Good Cause for Additional Discovery
`of Post-Institution Information
`
`VirnetX’s motion seeks to prove that RPX is an RPI or privy of Mangrove,
`
`such that Mangrove is time-barred. See Mot. 6. The Federal Circuit has held that
`
`the “focus of § 315(b) is on institution,” Power Integrations, Inc. v. Semiconductor
`
`Components Indus., LLC, 926 F.3d 1306, 1314–15 (Fed. Cir. 2019), and that “the
`
`time-bar determination may be decided fully and finally at the institution stage,”
`
`Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1373 (Fed. Cir. 2018) (en
`
`banc). The only information or acts relevant to compliance with § 315(b) would be
`
`dated before October 7, 2015, the date these proceedings were instituted.
`
`VirnetX’s discovery requests, however, are not time-limited—they expressly
`
`seek information dated well after October 7, 2015. VirnetX also makes no attempt
`
`to “show beyond speculation that in fact something useful will be uncovered” by
`
`discovering this post-institution information, nor are its requests “responsibly
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`tailored according to a genuine need.” See Garmin Int’l, Inc. v. Cuozzo Speed
`
`Techs. LLC, IPR2012-00001, Paper 26 at 5–7 (PTAB Mar. 5, 2013) (“Garmin”).
`
`Notably, a letter from Mangrove’s Founder and President to RPX that VirnetX
`
`portrays as “critical” to its RPI/privity theory was concededly sent more than six
`
`months after institution of these proceedings (Mot. 11, n.4), and actually
`
`demonstrates Mangrove’s adversarial posture toward RPX and that its sole
`
`relationship to RPX was as a shareholder. VirnetX cannot satisfy its burden of
`
`showing good cause for discovery of post-institution information, particularly
`
`given the Federal Circuit’s explanation that “the time-bar determination may be
`
`decided fully and finally at the institution stage.” Wi-Fi One, 878 F.3d at 1373.
`
`B. VirnetX Has Also Failed to Show Good Cause for Additional
`Discovery of Pre-Institution Information
`
`VirnetX must show that its requested discovery is “necessary in the interest
`
`of justice,” 35 U.S.C. § 316(a)(5), and already have “evidence tending to show
`
`beyond speculation that … something useful will be uncovered.” See Garmin at 6–
`
`7. VirnetX’s motion fails these requirements even for pre-institution evidence.
`
`First, Mangrove’s purchase of publicly traded shares of RPX does not make
`
`it an RPI or privy under § 315(b). See Ventex Co. v. Columbia Sportswear N. Am.,
`
`Inc., IPR2017-00651, Paper 148 at 10 (PTAB Jan. 24, 2019). The RPI inquiry, for
`
`example, must focus on “whether a non-party ‘desires review of the patent’ and
`
`whether a petition has been filed at a nonparty’s ‘behest.’” Applications in
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`Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018) (“AIT”))
`
`(quoting Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14,
`
`2012)). VirnetX identified nothing that remotely suggests that Mangrove filed its
`
`IPRs at the “behest” of RPX. Indeed, evidence known to VirnetX contradicts that
`
`proposition—it shows that Mangrove was a passive investor in RPX through 2016,
`
`after which it became a hostile, activist investor. See Ex. 2055.
`
`VirnetX bases much of its conspiracy theory on Mangrove’s offer in its
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`March 17, 2016 letter to work “behind the scenes” with RPX, while completely
`
`ignoring the context in which that offer was made: an attempt to resolve its dispute
`
`with RPX through compromise “without resorting to a public campaign to gain
`
`director representation.” See Ex. 2055, 1. A meet-and-confer between adverse
`
`parties to resolve differences does not suggest privity, much less a conspiracy.
`
`Second, VirnetX incorrectly asserts that “Mangrove’s motives … have never
`
`been adequately explained.” Mot. 8–9. VirnetX’s itself previously identified
`
`Mangrove’s motivation: “This proceeding was filed … to increase the value of the
`
`Mangrove Partners Hedge Fund’s short position in VHC stock.” Paper 9, 13.
`
`Third, VirnetX demands that its motion “be considered in the context of
`
`RPX’s past actions” (Mot. 6), but identifies nothing suggesting that RPX has ever
`
`used a third party such as Mangrove to act on its behalf in the way it alleges.
`
`Instead, the Federal Circuit and the Board decisions VirnetX cites suggest that
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`RPX’s business model involves acting directly on behalf of other parties. See, e.g.,
`
`AIT, 897 F.3d at 1351–52; IPR2014-00171, Paper 49. RPX’s “past actions” thus
`
`point decidedly away from the supposed role VirnetX imagines in this case.
`
`Finally, VirnetX has never explained how Mangrove’s supposed motivations
`
`are even relevant. It was Apple (not RPX) that was “served with a complaint
`
`alleging infringement of the” ’135 or ’151 patents, but VirnetX has not contended
`
`that Apple is an RPI or privy of Mangrove. See 35 U.S.C. § 315(b). VirnetX
`
`simply asserts that as an investor Mangrove “had a strong interest in RPX’s
`
`success (including RPX’s success in any services it had previously offered to
`
`Apple).” Mot. 9 (emphasis added). But that says nothing about whether Apple had
`
`a “preexisting, established relationship with” Mangrove (Ventex, IPR2017-00651,
`
`Paper 148, 6), and becoming a shareholder does not require an investor to adopt all
`
`of a public corporation’s past promises or to even support the company’s ultimate
`
`success in prior commitments. This rationale is idle speculation that cannot
`
`support a motion for additional discovery. See Garmin at 6–7 (Factor 1).
`
`C. Mangrove’s Voluntary Discovery Responses Moot Much of
`VirnetX’s Motion, the Balance of Which Should be Denied
`
`1.
`
`VirnetX’s Mangrove RFPs Are Largely Moot, and Should be
`Denied Otherwise
`
`In response to VirnetX’s Mangrove RFPs (Mot. 5, Appx. A), Petitioner
`
`Mangrove undertook a reasonable search for responsive communications,
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`documents, or things that existed prior to October 7, 2015, and, subject to certain
`
`objections, has either produced responsive documents or confirmed that it found
`
`none. See Ex. 1048. VirnetX’s requests are thus largely moot, and it cannot show
`
`good cause to justify the balance of its discovery requests.
`
`Mangrove RFP No. 1: Petitioner Mangrove “located no responsive
`
`communications, documents, or things concerning RPX and VirnetX or VirnetX
`
`patents” from before October 7, 2015. Ex. 1048, 1–2. This is consistent with
`
`Mangrove’s prior productions, which show no involvement by RPX in preparing
`
`the petitions. Petitioner Mangrove understood this RFP to mean “RPX and
`
`(VirnetX or VirnetX patents),” not “(RPX and VirnetX) or VirnetX patents.” Id.
`
`Mangrove RFP No. 2: Petitioner Mangrove “located no responsive
`
`communications between Mangrove Partners and RPX, or any documents or things
`
`concerning such communications, concerning patent office proceedings” from
`
`before October 7, 2015. Ex. 1048, 3–4. VirnetX has not established good cause for
`
`the broader production of “[c]ommunications, documents, or things concerning
`
`RPX and patent office proceedings.” Purely internal-to-Mangrove documents
`
`describing RPX’s business model or mentioning post-grant proceedings are not
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`probative of any relationship between Mangrove and RPX. See Garmin at 6–7.
`
`Mangrove’s response to Mangrove RFP No. 3 further moots this request.
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`Mangrove RFP No. 3: “[W]ith respect to RPX stock that was acquired by
`
`Mangrove Partners prior to October 7, 2015, Petitioner Mangrove has … produced
`
`or identified communications, documents, or things sufficient to show Mangrove
`
`Partners’ reasons for acquiring that RPX stock and any underlying agreements
`
`surrounding Mangrove Partners’ acquisition of that RPX stock.” Ex. 1048, 4–5;
`
`see Ex. 1049; Ex. 1051; Ex. 1052; Ex. 1055; Ex. 1056; Ex. 2055. Prior to October
`
`7, 2015, Mangrove Partners was a passive investor in publicly-traded RPX and
`
`there were no agreements between Mangrove Partners and RPX “surrounding
`
`Mangrove Partners’ acquisition of that RPX stock.” Ex. 1049, 5. Mangrove’s
`
`production of information “sufficient to show” this topic is “sensible and
`
`responsibly tailored” and not so “overly burdensome to answer,” and any request
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`for all responsive “[c]ommunications, documents, or things” is improper as it
`
`needlessly encompasses duplicative documents not relevant to show any
`
`relationship between Mangrove and RPX. See Garmin at 6–7 (Factors 1 & 5).
`
`Mangrove RFP No. 4: Petitioner Mangrove “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.” Ex.
`
`1048, 5–6. VirnetX has not established good cause for discovery of all
`
`“[c]ommunications, documents, or things, relating to both RPX and Mangrove
`
`Partners’ decision to pursue and initiate IPR2015-01046 and IPR2015-01047.” The
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`breadth of this RFP is unduly burdensome due to VirnetX’s threat of separate
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`litigation against Mangrove regarding the filing of these IPRs (see § III.C.2; Paper
`
`9, 12–15) and conflicts with VirnetX’s representation that its requests would
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`“narrowly focus on the relationship between Mangrove and RPX.” Mot. 6.
`
`2.
`
`VirnetX’s Mangrove Deposition Requests Are Largely Moot,
`and Should be Denied Otherwise
`
`VirnetX’s requests for depositions of Nathaniel August and a Mangrove
`
`corporate representative should be denied. See Mot. 5, Appx. B & C. VirnetX
`
`asserts it made “concessions” by requesting depositions because “interrogatories
`
`would likely result in delays” (Mot. 15), but VirnetX has it backwards—written
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`discovery is far less burdensome and is more “sensible and responsibly tailored”
`
`than a deposition of Mangrove’s executive or corporate representative. See Garmin
`
`at 6–7 (Factor 5). VirnetX previously recognized that interrogatory responses in
`
`lieu of a deposition are appropriate. VirnetX’s Request for Deposition of Apple
`
`Inc. in IPR2014-00171 explained that “[t]o the extent Apple prefers to respond to
`
`this topic in writing instead of providing a witness, effectively treating the topic as
`
`a deposition by written question or an interrogatory, Apple may do so ….” RPX
`
`Corp. v. VirnetX Inc., IPR2014-00171, Ex. 2026, 1. Here, Mangrove has thus
`
`responded to VirnetX’s present deposition requests as if they were interrogatories.
`
`Mangrove Deposition Topics Nos. 1 and 2: Petitioner Mangrove has
`
`identified no communications with RPX before October 7, 2015, concerning
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`“VirnetX or VirnetX patents” (Ex. 1049, 1–2) or “patent office proceedings” (id.,
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`3–4). As explained above with respect to Mangrove’s responses to Mangrove RFP
`
`Nos. 1–2, VirnetX has not shown good cause for discovery beyond
`
`communications between Mangrove and RPX.
`
`Mangrove Deposition Topic No. 3: Mangrove “
`
`
`
`
`
`
`
`
`
`
`
`” Ex. 1049, 5 (quoting Ex. 1051, 2); see also Ex. 1055; Ex.
`
`1056. “Before October 7, 2015, 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.” Ex. 1049, 5.
`
`Mangrove Deposition Topic No. 4: Petitioner Mangrove “has identified no
`
`information relating to both RPX and Mangrove Partners’ decision to pursue and
`
`initiate IPR2015-01046 and IPR2015-01047.” Ex. 1049, 6–7. Mangrove’s reasons
`
`for pursuing and initiating IPR2015-01046 and IPR2015-01047 were unrelated to
`
`its RPX investment strategy—Mangrove pursued and initiated these IPRs “to
`
`increase the value of the Mangrove Partners Hedge Fund’s short position in VHC
`
`stock.” Id. (quoting Paper 9, 13); Ex. 2004, 2; Ex. 2006, 2; Ex. 1053; Ex. 1054.
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`Given these responses, VirnetX cannot show good cause for its requested
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`Mangrove depositions. See Garmin at 6–7. Because VirnetX possesses “the
`
`requested information without need of [additional] discovery” (Factor 3), it cannot
`
`demonstrate good cause for costly depositions in the speculative belief that they
`
`might demonstrate some inconsistency with Mangrove’s written responses or
`
`document productions. See Garmin at 6–7; Nuseed Americas Inc. v. BASF Plant
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`Sci. GMBH, IPR2017-02176, Paper 20 at 3–5 (PTAB May 4, 2018) (denying a
`
`request for a deposition in light of voluntary written discovery).
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`The burden on Mangrove from any deposition is also substantial given
`
`VirnetX’s allegations of misconduct and threatened litigation against Mr. August
`
`and Mangrove. VirnetX’s Preliminary Response contended Mangrove started this
`
`proceeding for an “improper purpose”—shorting and then “manipulating” the
`
`value of VirnetX’s stock—and that Mangrove had intentionally misidentified its
`
`RPIs, including Mr. August, “in an attempt to shield them from any liability
`
`arising out of the filing of the Petition.” Paper 9, 12–15 (emphasis added).
`
`VirnetX also has threatened litigation against Mangrove and Mr. August—it
`
`attached a complaint with its response against another investment fund to suggest
`
`that Mangrove and Mr. August’s conduct may “constitute[] attempted civil
`
`extortion and malicious prosecution under California law ….” Id., 12 (quoting Ex.
`
`2021) (emphasis added). VirnetX’s threat of litigation concerns the precise topic of
`
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`
`deposition it now requests: “Mangrove Partners’ decision to pursue and initiate
`
`IPR2015-01046 and IPR2015-01047.” Given these considerations, VirnetX cannot
`
`show good cause exists to depose Mr. August or Mangrove simply to confirm what
`
`it already knows through public information and Mangrove’s discovery responses.
`
`3.
`
`VirnetX’s Discovery of RPX Should be Denied
`
`VirnetX seeks discovery of the same information from RPX as it seeks from
`
`Mangrove—“communications between Mangrove and RPX (… RFP Nos. 1-2) and
`
`Mangrove’s acquisition of RPX stock (… RFP No. 3)” (“RPX RFPs”)—as well as
`
`the deposition of “a corporate representative of RPX on topics consistent with”
`
`VirnetX’s RPX RFPs. Mot. 5–6 (Appx. D & E). These requests should be denied.
`
`First, there is no reason to request the same discovery from multiple parties,
`
`particularly where one is not a party to these proceedings. VirnetX concedes the
`
`“overlap in its requests” (Mot. 14) for good reason: it seeks to discover the same
`
`communications from both Mangrove and RPX. But see Garmin at 6 (Factor 3:
`
`“Information a party can reasonably [acquire] without a discovery request would
`
`not be in the interest of justice to have produced by the other party.”).
`
`Second, Mangrove has already confirmed there were no pre-institution
`
`communications between Mangrove and RPX about VirnetX, VirnetX’s patents, or
`
`patent office proceedings, produced information sufficient to show Mangrove’s
`
`reasons for acquiring RPX stock, and confirmed there were no underlying
`
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`agreements with RPX surrounding Mangrove’s acquisition of RPX stock. Ex.
`
`1048, 1–5; Ex. 1049, 1–4. VirnetX’s speculative concern over “documents that
`
`may no longer exist” or information “never memorialized” is baseless. See Mot.
`
`14. VirnetX cannot show, beyond speculation, that discovery from RPX would
`
`somehow contradict the discovery from Mangrove. See Garmin at 6 (Factor 1).
`
`Finally, injecting RPX into this proceeding would disrupt the remand
`
`schedule and be “overly burdensome … given the expedited nature of Inter Partes
`
`Review.” Garmin at 6–7 (Factor 5). The first time VirnetX unequivocally indicated
`
`it wished to obtain discovery from RPX was when it filed its motion on September
`
`27, 2019. VirnetX has not indicated that it met or conferred with RPX regarding
`
`the requested discovery, and did not serve its motion on RPX’s counsel. Moreover,
`
`any opposition to VirnetX’s motion would be due by October 4, briefing concludes
`
`on October 11, and fact discovery is scheduled to close by November 8. See Paper
`
`89, 4. RPX may very well oppose, which could further delay these proceedings.
`
`IV. Conclusion
`
`For the foregoing reasons, VirnetX’s motion should be denied.
`
`
`
`Dated: October 4, 2019
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`
`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
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`IPR2015-01047
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`T: 917-626-1356
`Attorney for Petitioner Mangrove
`
`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
`
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`US. Patent No. 7,490,151
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`EXHIBIT LIST
`
`Exhibit # Reference Name
`
`1001
`
`1002
`
`US. Patent No. 7,490,151 to Munger
`
`Takahiro Kiuchi and Shigekoto Kaihara, “C-HTTP — The
`Development of a Secure, Closed HTTP—based Network on the
`Internet,” published by IEEE in the Proceedings of SNDSS 1996
`
`1003
`
`Declaration of Dr. Roch Guerin
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`E. Rescorla and A. Schiffman, “The Secure Hypertext Transfer
`Protocol,” Internet Draft (Feb- 1996)
`
`Mockapetris, P., RFC 1034, “Domain Names—Concepts and
`Facilities,” Nov. 1997
`
`Excerpts from the Prosecution History of the ’ 151 Patent
`
`Patent Owner’s Preliminary Response, Paper 7, in IPR2014-00610
`
`Excerpts from Webster’s Third New International Dictionary (1971)
`
`VirnetX’s Reply Claim Construction Brief in VimetX Inc. V. C isco
`Systems, Inc. eta1., 6:10-cv—4l7 (Dec. 19, 2011) (ED. Tex.)
`
`1010
`
`Bradner, 8., RFC 2026, “The Internet Standards Process — Revision
`
`3,” Oct. 1996
`
`1011
`
`1012
`
`1013
`
`1014
`
`Decision to Institute Inter Partes Review, Paper 9, in IPR2014-
`00610 (Oct. 15, 2014)
`
`Chatel, M., RFC 1919, “Classical versus Transparent IP Proxies,”
`March 1996
`
`Fielding et al., RFC 2068, “Hypertext Transfer Protocol —
`HTTP/ 1.1,” Jan. 1997
`
`Berners-Lee et al., RFC 1945, “Hypertext Transfer Protocol --
`HTTP/ 1.0,” May 1996
`
`[mm
`
`1016
`
`[RESERVED]
`
`
`
`1017 [RESERVED]
`
`1018
`
`1019
`
`[RESERVED]
`
`[RESERVED]
`
`PETITIONERS’ PARTIAL OPP. TO PO’S MOT. FOR ADDITIONAL DISCOVERY
`
`1 7
`
`
`
`

`

`IPR2015-01047
`
`US. Patent No. 7,490,151
`
`Exhibit # Reference Name
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1036
`
`1037
`
`1038
`
`[RESERVED]
`
`[RESERVED]
`
`[RESERVED]
`
`[RESERVED]
`
`E. Rescorla and A. Schiffman, RFC 2660, “The Secure Hypertext
`Transfer Protocol,” Aug. 1999
`
`Petitioner’s Proposed Revisions of Patent Owner’s Requests for
`Production
`
`Petitioner’s Proposed Revisions of Patent Owner’s Interrogatories
`
`Declaration of Scott M. Border in Support of Petitioner Apple’s
`Motion for Pro Hac Vice Admission
`
`[RESERVED]
`
`Declaration of Sandy Ginoza on behalf of the RFC Publisher for the
`Internet Engineering Task Force, dated January 23, 2013, submitted
`in Investigation No. 337-TA—858
`
`Mockapetris, P., RFC 1034, “Domain Names — Concepts and
`Facilities,” bearing Bates Nos. 337-TA—858-IETF00022 through
`00073
`
`Transcript of Feb. 8, 2013 deposition of Sandy Ginoza, ITC Inv. No.
`337—TA—858
`
`The Reality of Virtual Private Networks, InfoWorld, Aug. 16, 1999
`(Advertising Supplement)
`
`Gibbs, M., IP Security: Keeping Your Business Private, Network
`World (March 15, 1999)
`
`Bradner, 8., RFC 2418, “IETF Working Group Guidelines and
`Procedures” (September 1998)
`
`Proposed Protective Order
`
`Deposition Transcript of Dr. Fabian Monrose (April 28, 2016)
`
`Malkin, G., RFC 1983, “Internet Users’ Glossary,” Aug. 1996
`
`Plaintiff VirnetX Inc’s Opening Brief in Support of its
`Constructions of Claims Pursuant to RR. 4-5, VirnetXInc. v.
`
`
`
`PETITIONERS’ PARTIAL OPP. TO PO’S MOT. FOR ADDITIONAL DISCOVERY
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`18
`
`

`

`IPR2015-01047
`
`US. Patent No. 7,490,151
`
`Exhibit # Reference Name
`
`Microsoft Corp, Case No. 6:07-cv—00080-LED, ECF No. 194 (ED.
`Tex. Dec. 30, 2008).
`
`1039
`
`1040
`
`Guerin, R., RFC 2676, “QoS Routing Mechanisms and OSPF
`Extensions,” Aug. 1999
`
`Guerin, R., Internet Draft, “QoS Routing Mechanisms and OSPF
`Extensions,” Nov. 5, 1996, draft-guerin-qos-routing-ospf-OO.txt
`
`1041
`
`Huitema, C ., RFC 1602, The Internet Standards Process — Revision
`
`2, Mar. 1994
`
`1042
`
`1043
`
`1044
`
`1045
`
`Chapin, L., RFC 1310, The Internet Standards Process, Mar. 1992
`
`Microsoft Computer Dictionary (4th Ed. 1999)
`
`Transcript of Trial, November 1, 2012 Afternoon Session, VirnetX
`Inc. v. Apple Inc., Case No. 6:07-cv-004l7-RWS, ECF No. 612
`(ED. Tex. Nov. 9, 2012)
`
`E-mail exchange regarding request for Dr. Short’s deposition
`between Counsel for Petitioners and Counsel for Patent Owner from
`
`March 25, 2016 to April 11, 2016
`
`1046
`
`Petitioners’ Demonstratives
`
`1047
`
`Transcript of PTAB Conference Call (Sept. 6, 2019)
`
`1048
`[NEW]
`
`1049
`[