Trials@uspto.gov
`Tel: 571-272-7822
`
`
` Paper 88
`Entered: October 23, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE INC.,
`Petitioner,
`v.
`VIRNETX INC.,
`Patent Owner.
`Case IPR2015-01046
`Patent 6,502,135 B1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC.,
`and BLACK SWAMP IP, LLC,
`Petitioner,
`v.
`VIRNETX INC.,
`Patent Owner.
`Case IPR2015-01047
`Patent 7,490,151 B2
`
`
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`KARL D. EASTHOM and STEPHEN C. SIU, Administrative Patent
`Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`DECISION
`Granting In Part Patent Owner’s Motion for Additional Discovery
`37 C.F.R. §§ 42.20 and 42.51(b)(2)
`
`
`
`
`
`
`
`
`

`

`IPR2015-01046 - Patent 6,502,135 B1
`IPR2015-01047 - Patent 7,490,151 B1
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`
`I. INTRODUCTION
`Pursuant to the Remand Schedule and Discovery Motion Order (Paper
`80, “Order”), VirnetX Inc. (“VirnetX” or “Patent Owner”) filed a Motion for
`Additional Discovery (Paper 81, “Motion” or “Mot.”).1 In IPR2015-01046,
`the Mangrove Partners Master Fund, Ltd. (“Mangrove”) and Apple Inc.
`(“Apple”) (collectively “Petitioner”), filed a “Partial Opposition to Patent
`Owner’s Motion for Additional Discovery.” 2 Paper 82 (unredacted
`“Opposition” or “Opp.”). Patent Owner filed a Reply to Petitioner’s
`Opposition to Patent Owner’s Discovery Motion. Paper 85 (“Disc. Reply”).
`As noted, regarding discovery, Mangrove, Apple, and Black Swamp, LLC
`(also collectively “Petitioner”) filed materially similar papers and exhibits in
`IPR2015-01047. Supra notes 1, 2; IPR2015-0147, Papers 90–92 & 94.
`In IPR2015-01046, in a Petition filed on April 14, 2015, Petitioner
`Mangrove requested inter partes review of claims 1, 3, 4, 7, 8, 10, and 12 of
`U.S. Patent No. 6,502,135 B1 (“the ’135 patent”). After instituting review
`on October 7, 2015 (Paper 11 (“Institution Decision”)), the Board joined
`Apple on January 25, 2016 (supra note 2) and thereafter conducted a trial
`and issued a Final Written Decision, holding claims 1, 2, 6–8, and 12–14 of
`the ’135 patent unpatentable. See IPR2015-01046, Paper 71.
`
`
`1 Unless otherwise noted, citations refer to IPR2015-01046. The parties
`raised identical discovery issues and filed materially similar papers in both
`cases. This Order applies to both cases.
`2 Apple filed a petition on October 26, 2015 in IPR2016-00062, and the
`Board joined it as a party in IPR2015-01046 on January 25, 2016. Apple
`Inc. and Black Swamp, LLC, respectively filed a petition in IPR2016-00063
`on October 26, 2015 and in IPR2016-00167 on November 6, 2015, and the
`Board joined them as parties in IPR2015-01047, respectively on January 25,
`2016 and February 4, 2016.
`
`2
`
`

`

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`
`Similarly, in IPR2015-01047, in a Petition filed on April 14, 2015,
`Petitioner Mangrove requested inter partes review of claims 1, 2, 6–8, and
`12–14 of U.S. Patent No. 7,490,151 B2 (“the ’151 patent”). After instituting
`review on October 7, 2015 (“Institution Decision”), the Board joined Apple
`on January 25, 2016 and Black Swamp, LLC on February 4, 2016 (supra
`note 2), and thereafter conducted a trial and issued a Final Written Decision,
`holding claims 1, 2, 6–8, and 12–14 of the ’151 patent unpatentable. See
`IPR2015-01047, Paper 80.
`
`Patent Owner appealed the Final Written Decisions. Pursuant to the
`appeals, the United States Court of Appeals for the Federal Circuit issued a
`decision vacating the Final Written Decisions and remanding to consider an
`issue on the merits of unpatentability and to allow Patent Owner to file a
`motion for additional discovery to support its real party in interest
`contentions. See VirnetX Inc. v. The Mangrove Partners Master Fund, Ltd.,
`Apple Inc., No 2017-1368, VirnetX Inc. v. The Mangrove Partners Master
`Fund, Ltd., Apple Inc., Black Swamp, No. 2017-1383, 2019 WL 2912776
`(Fed. Cir. July 8, 2019) (the “Remand Decision”).
`The Federal Circuit’s mandate after the Remand Decision issued on
`August 14, 2019. See Paper 78, 1. Accordingly, after reviewing the parties’
`proposed schedules for the remand trial (see Papers 78–80), the Order set a
`deadline of November 8, 2019 for the close of discovery, so that the decision
`on remand may be completed by February 14, 2020 pursuant to SOP 9. 3 See
`
`
`3 “The Board has established a goal to issue decisions on remanded cases
`within six months of the Board’s receipt of the Federal Circuit’s mandate.
`The mandate makes the judgment of the Federal Circuit final and releases
`jurisdiction of the remanded case to the Board.” PTAB Standard Operating
`Procedure 9, Procedure for Decisions Remanded from the Federal Circuit for
`
`3
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`

`

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`Order, 3–4. As noted in the Order, Patent Owner bears the burden on the
`Motion.
`
`II. THE FEDERAL CIRCUIT’S REMAND DECISION
`The Order specifies that the parties “shall follow the court’s guidance
`
`as set forth in the” Remand Decision. Paper 80, 2 & n.2. The Remand
`Decision explains that Patent Owner’s theory involves its contention that
`Apple, who joined the Petitions (supra note 2), “was in some way involved
`in the [P]etitions” through RPX:
`While the proceedings were pending, 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.” J.A. 7070. After
`institution, Mangrove disclosed that it owned about five percent
`of RPX, which made it RPX’s fifth largest shareholder. J.A.
`7213, 7220. In a March 2016 letter, Mangrove stated that it
`recently met with management from RPX. J.A. 7221. 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.
`J.A. 6246, 6251–52. VirnetX believed that, through RPX, Apple
`was in some way involved in the petitions. The Board did not
`let VirnetX move for additional discovery because the alleged
`facts “d[id] not show more than a mere possibility that
`something useful [would] be discovered and [was] therefore
`insufficient to show beyond mere speculation that discovery
`would be in the interests of justice.” J.A. 448; J.A. 2243. The
`
`
`Further Proceedings (Nov. 9, 2017) (“SOP 9”), available at
`https://usptogov.sharepoint.com/sites/bf319f98/Shared%20Documents/Form
`s/AllItems.aspx?FolderCTID=0x012000F14F79D244FFB74496C315D3702
`0EB04.
`
`4
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`
`Board then rejected VirnetX’s contention that RPX was a real
`party in interest for lack of evidence. J.A. 45; J.A. 84.
`Remand Decision at *3 (emphasis added).
`
`Of course, as the Remand Decision recognizes, Apple sought joinder
`after the filing of the Petitions and prior to the Institution Decisions (“pre-
`institution” (see supra note 2)), so Apple necessarily became involved in the
`proceedings at some point as a joined party, albeit primarily after the
`Institution Decisions. See note 2; Remand Decision at *3 (“At this stage in
`the proceedings, we see no prejudice in Apple’s continued involvement, but
`we leave open the question of whether prejudice could arise later.”).
`Patent Owner contends “[t]he evidence suggests . . . that Mangrove
`did not initiate the IPRs on its own volition, but rather to support RPX’s
`efforts.” Paper 81, 9. Referring to the RPX Corp. Board decisions, Patent
`Owner also contends “RPX was improperly acting as Apple’s proxy.” 4 See
`id. at 8. Patent Owner also seeks useful information as to its “position that
`RPX is an unnamed RPI and/or privy.” Id. at 6.
`During the teleconference discussing the contours and authorization of
`the contemplated Motion, Vice Chief Judge Tierney specifically “cautioned
`VirnetX” at least twice that “an overly broad discovery request is more
`likely to get denied than a narrowly tailored one.” Ex. 1047, 32:12–14
`(emphasis added), 17–19 (“But I do want to make sure––again, there is a
`
`4 RPX Corp. v. VirnetX Inc., IPR2014-00171, Paper 57 at 2–7 (July 14,
`2014) (“RPX Corp.”) (denying institution because un-named RPI Apple was
`served with a complaint more than 1 year before its proxy, RPX, filed its
`petition). RPX Corp. actually involved denial of seven petitions in Cases
`IPR2014-00171–77 challenging four VirnetX patents, including both patents
`at issue here. See RPX Corp., Paper 57 at 1–2 (listing Cases IPR2014-
`00171–77 and denying institution for all seven based on the same rationale
`and facts).
`
`5
`
`

`

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`concern that if it’s overly broad, it could get denied.”). Vice Chief Judge
`Tierney explained “[t]his is something we’ve always talked about. It’s not
`particular to this case.” Id. at 37:10–12.
`The discovery here will be useful only if it relates to communications
`or activities before the filing of the Petitions and the Institution Decisions,
`because as noted above, the court stated “VirnetX believed that, through
`RPX, Apple was in some way involved in the [P]etitions.” See Remand
`Decision at * 3 (emphasis added). Moreover, as Petitioner argues, “[t]he
`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). Opp. 5.
`Under 35 U.S.C. § 316 (a) (5), “[t]he Director shall prescribe
`regulations . . . setting forth standards and procedures for discovery of
`relevant evidence, including that such discovery shall be limited to—(A)
`the deposition of witnesses submitting affidavits or declarations; and (B)
`what is otherwise necessary in the interest of justice.” (Emphasis added). In
`other words, Congress narrowed discovery here, relative to district court
`discovery, to “relevant evidence . . . necessary in the interest of justice.” See
`id.
`
`However, Patent Owner did not tailor its discovery to seek relevant
`pre-institution evidence––i.e., evidence of communications, documents, and
`things occurring at a time prior to the date of Institution Decisions (i.e.,
`October 7, 2015) to show any alleged involvement in the Petitions, despite
`
`6
`
`

`

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`the Board’s cautionary instruction to narrowly tailor its request during the
`teleconference as discussed above.
`For its part, as discussed further below, Mangrove voluntarily
`complied with Patent Owner’s discovery requests to the extent they involve
`discovery of communications, documents, and things arising before the
`Institution Decisions. Under 37 C.F.R. § 42.51(b)(2)(i),
`[t]he parties may agree to additional discovery between
`themselves. Where the parties fail to agree, a party may move
`for additional discovery. The moving party must show that
`such additional discovery is in the interests of justice, except in
`post-grant reviews where additional discovery is limited to
`evidence directly related to factual assertions advanced by
`either party in the proceeding (see § 42.224). The Board may
`specify conditions for such additional discovery.
`Under the rule, Mangrove voluntarily agreed to the relevant additional
`discovery requested in the Motion, including by supplying written answers
`to interrogatories (instead of the requested depositions). With the caveat
`discussed below regarding the allowance of additional interrogatories in lieu
`of depositions, Mangrove’s compliance satisfies the interests of justice
`standard specified in 35 U.S.C. § 316(a)(5), by producing relevant evidence
`arising pre-institution, for the reasons noted above and as discussed further
`below. See Remand Decision at *3 (focusing on the Petitions); Power
`Integrations (focusing on pre-institution); Wi-Fi One (similar); 35 U.S.C.
`§ 316 (a) (5) (“interest of justice” standard). Any deposition or post-
`institution discovery does not satisfy the interests of justice standard,
`because considering the additional interrogatories allowed as discussed
`below, Mangrove’s written answers suffice as to the depositions, and Patent
`Owner does not explain persuasively how obtaining evidence of
`communications, documents, and things occurring over the past three or four
`
`7
`
`

`

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`years would somehow relate to showing any RPI status (or a privity
`relationship between Mangrove and RPX), and how Apple was involved in
`the Petitions filed over four years ago. Also, Patent Owner does not explain
`persuasively in its Motion why it should be granted redundant discovery
`from third party RPX except to state that the redundant discovery would
`provide an evidentiary crosscheck on the requested Mangrove discovery.
`Disc. Reply 5.
`Patent Owner’s broad requests are unduly burdensome as to RPX as
`unreasonably duplicative as the requested discovery is already sought, and
`can be obtained from, Mangrove. Further, Patent Owner’s requests are
`unduly burdensome as they seek documents that are not reasonably limited
`in time to the date of institution and Patent Owner provides little, if any
`justifiable reason, for seeking any and all documents created years after the
`critical institution date. Additionally, Petitioner Mangrove provided
`voluntary production. Based on the record presented, we hold that Patent
`Owner’s broad requests do not satisfy the interest of justice standard
`proscribed by 35 U.S.C. § 316(a)(5).
`Nevertheless, even though the Board need only provide a binary grant
`or denial on the Motion, given the short time frame for completing this
`proceeding by February 14, 2020 pursuant to SOP 9, given the focus on pre-
`institution activities as specified by Power Integrations, 926 F.3d at 1314–
`15, and to ensure sufficient discovery for Patent Owner in the interests of
`justice, we exercise our discretion on this particular record and tailor the
`discovery request by 1) imposing a pre-institution cut-off date for discovery
`purposes as noted above, and 2) allowing 10 interrogatories of Mangrove in
`lieu of the sought-after depositions of Mangrove, as specified further below.
`
`8
`
`

`

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`
`In exercising discretion, we note Patent Owner’s discovery request
`agrees implicitly, at least in certain portions and to a certain extent, with this
`pre-institution cut-off date. For example, Patent Owner seeks
`“[c]ommunications, documents, or things, relating to Mangrove Partners’
`decision to pursue and initiate IPR2015-01046 and IPR2015-01047.”
`Motion, App’x A, 4 (RFP No. 4) (emphasis added). Any such decision
`necessarily would have occurred pre-institution. Similarly, Patent Owner
`agrees that the evidence should focus on “a relationship between the two
`entities at the time of institution.” Mot. 11 & n.4.
`Similarly, with respect to the depositions, as Petitioner notes, Patent
`Owner previously agreed to the appropriateness of interrogatories in the
`interest of justice in the RPX Corp. Board cases relied upon by Patent Owner
`to support its Motion (see Mot. 3, 8; supra note 4):
`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.”
`Opp. 11 (citing RPX Corp., Paper 57 at 1 (Ex. 2026, 1)).
`A more detailed analysis of Patent Owner’s discovery requests
`according to guidance in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper 26 at 6 (PTAB Mar. 5, 2013) (precedential)) follows.
`III. DISCOVERY ANALYSIS USING GARMIN FACTORS
`As the Remand Decision recognizes, “[t]he Board has listed five
`
`factors important in determining whether discovery is in the interest of
`justice, including that there be more than a ‘mere possibility of finding
`something useful.’” Remand Decision at *3 (quoting Garmin, Paper 26 at
`
`9
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`

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`6). After weighing the Garmin factors and considering the briefing by the
`parties, and for the reasons listed in the Opposition, which we adopt as
`persuasive as summarized below, we determine that under the interest of
`justice, Petitioner Mangrove voluntarily complied with the Motion for the
`most part, other than as explained above and below with respect to allowing,
`out of an abundance of caution, 10 interrogatories in lieu of the request for
`depositions of Mangrove.
`For the reasons explained above and further below, we determine that
`allowing time-unlimited discovery (i.e., not limited to pre-institution
`discovery), the depositions requested, and any discovery of RPX, does not
`meet the statutory interest of justice standard.
`A. PATENT OWNER’S DISCOVERY OF MANGROVE
`Patent Owner seeks the following discovery of Mangrove as requests
`for production (RFPs):
`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).
`Mot. 5–6 (footnote omitted). 5
`
`
`5 In the omitted footnote, 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.
`
`10
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`In Opposition, Mangrove provides the following with respect to the
`
`RFPs:
`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, 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 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.
`
`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
`
`11
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`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. 2058. 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 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 breadth of this RFP
`is unduly burdensome due to VirnetX’s threat of separate
`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 “narrowly focus on the
`relationship between Mangrove and RPX.” Mot. 6.
`
`With respect to depositions, VirnetX seeks the following:
`
`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).
`
`
`12
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`
`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).
`Mot. 5.
`In response, Mangrove responds initially by stating “Mangrove has
`thus responded to VirnetX’s present deposition requests as if they were
`interrogatories.” Opp. 11. Mangrove’s responses largely track its responses
`to the RFPs above, because Patent Owner seeks to depose Mr. August or
`another corporate representative on those topics, as indicated above. In
`other words, Mangrove provides written responses related to pre-institution
`discovery.
`As an example, for Deposition Topics 1 and 2, Mangrove replies
`“Petitioner Mangrove has identified no communications with RPX before
`October 7, 2015, concerning “VirnetX or VirnetX patents” (Ex. 1049, 1–2)
`or “patent office proceedings” (id., 3–4).”
`For Deposition Topic 3, Mangrove provides supporting evidence and
`replies that Mangrove “
`
`
`
`
`
`
`
`
`.” Ex. 1049, 5 (quoting Ex. 1051, 5); Opp. 12 (quoting Ex. 1051, 5; Ex.
`1049, 5). Mangrove adds “[b]efore 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.” Opp. 12 (quoting Ex. 1049, 5).
`
`13
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`
`For Deposition Topic 4, Mangrove provides supporting evidence and
`replies as follows:
`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.
`Opp. 12.
`
`Nevertheless, out of an abundance of caution, to ensure, under the
`interests of justice, that Mangrove’s responses comply with topics Patent
`Owner otherwise seeks to discover in a deposition, we grant 10
`interrogatories limited to a pre-institution time frame with topics no broader
`than the requested deposition topics in Appendices C and D.
`Garmin Factor 1
`Under Garmin factor 1, “[t]he mere possibility of finding something
`useful, and mere allegation that something useful will be found, are
`insufficient to demonstrate that the requested discovery is necessary in the
`interest of justice.” Garmin, Paper 26 at 6. As Petitioner argues, Patent
`Owner’s requests for discovery for anything occurring after the date of the
`Institution Decisions, namely October 7, 2015, amounts to less than a mere
`possibility of finding something useful. See Opp. 5 (“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
`
`14
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`and finally at the institution stage,’ Wi-Fi One, LLC v. Broadcom Corp., 878
`F.3d 1364, 1373 (Fed. Cir. 2018) (en banc).
`As indicated in the Opposition as quoted above, Petitioner voluntarily
`complied with Patent Owner’s requests for discovery, to the extent Patent
`Owner sought discovery for “responsive communications, documents, or
`things” existing prior to the date of the Institution Decisions, October 7,
`2017. See Mot. 5. As Petitioner argues, “[t]he only information or acts
`relevant to compliance with § 315(b) would be dated before October 7,
`2015, the date these proceedings were instituted.” Id.
`
`Under RFP1, Mangrove “‘located no responsive communications,
`documents, or things concerning RPX and VirnetX or VirnetX patents’ from
`before October 7, 2015.” Opp. 9 (quoting Ex. 1048, 1–2). Under RFP2,
`Petitioner “‘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.” Opp. 9 (quoting Ex. 1048, 3–4). Under RFP3, “[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 Opp.
`10 (quoting Ex. 1048, 4–5; citing Ex. 1049; Ex. 1051; Ex. 1052; Ex. 1055;
`Ex. 1056; Ex. 2058). Under RFP 4, “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; see Opp. 10 (quoting Ex. 1048, 5–6).
`
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`Relative to the sought-after depositions of Mr. August or another
`
`Mangrove representative, Mangrove persuasively responds that it largely
`produced the sought-after information, albeit in interrogatory answer form,
`as noted above. Any other information from a deposition would be based on
`speculation, as Petitioner argues:
`Because VirnetX possesses “the requested information without
`need of [additional] discovery” ([Garmin] 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 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).
`Opp. 13.
`
`Patent Owner contends Mangrove’s voluntary production does not
`satisfy its discovery requests based on alleged “self-serving representations”
`by Mangrove. See Mot. 5. Accordingly, to ensure, under the interests of
`justice, that Mangrove’s responses comply with topics Patent Owner
`otherwise seeks to discover in the requested deposition, we grant 10
`interrogatories limited to the pre-institution time frame with topics no
`broader than the requested deposition topics in Appendices C and D of the
`Motion. Under Power Integration, which focuses on pre-institution as the
`relevant time frame for determining the sought-after privity or RPI
`relationships by Patent Owner, any pre-institution discovery amounts to “the
`mere possibility of finding something useful,” a “mere allegation that
`something useful will be found,” and an “insufficient . . . demonstrate[ion]
`that the requested discovery is necessary in the interest of justice.” Garmin,
`Paper 26, at 6. Patent Owner does not explain in its Motion persuasively
`
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`IPR2015-01046 - Patent 6,502,135 B1
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`how post-institution discovery would show, for example, that RPX was
`involved in the Petition prior to institution. Patent Owner contends emails
`may contain earlier dated threads and attachments and may be informative
`about Mangrove’s motivation prior to the date of the Institution Decisions.
`Disc. Reply 2. However, Patent Owner does not explain why the earlier
`dated threads and attachments would not have been covered by a discovery
`request reasonably limited in time to the date of institution.
`The record shows, and Patent Owner argues, that Mangrove owned
`stock in RPX (see Remand Decision at *3), so any control relevant here
`would be by Mangrove over RPX, not by RPX over Mangrove, and
`Mangrove already filed a Petition at its own behest (for business reasons as
`discussed further below), prior to Apple’s joinder and filing of Apple’s
`joined petition (see supra note 2). Nothing Patent Owner points to suggests
`beyond mere speculation that after the Institution Decision, RPX would have
`communicated with Mangrove about Apple in relation to pre-institution
`activities with respect to the proceedings here.
`Nevertheless, Patent Owner contends “[t]he 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.” Motion
`6. Patent Owner cites RPX Corp., Paper 5[7] at 5–7 to support the
`contention. See Mot. 3; supra note 4. In RPX Corp, as indicated above (see
`supra note 4), the Board held RPX served as a proxy to file seven petitions
`challenging 4 patents (including the ’135 patent) on behalf of un-listed RPI
`Apple, who was served with a complaint more than one year before RPX
`filed the petitions, time-barring the petitions and denying institution of inter
`partes review. See id. at 2–3; 35 U.S.C. § 315(b) (“An inter partes review
`
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`may not be instituted if the petition requesting the proceeding is filed more
`than 1 year after the date on which the petitioner, real party in interest, or
`privy of the petitioner is served with a complaint alleging infringement of
`the patent”).
`According to Patent Owner, other “evidence strongly suggests that
`Mangrove and RPX have an RPI or privity relationship with respect to these
`IPRs.” Mot. 10. As part of its theory, Patent Owner also asserts “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