`Date: December 14, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLACK SWAMP IP LLC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00167
`Patent 7,490,151 B1
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
` A
`
` conference call in the above proceeding was held on December 14, 2015,
`among respective counsel for Black Swamp IP, LLC (“Black Swamp”) and
`VirnetX Inc., and Judges Tierney, Easthom, and Siu. On November 6, 2015, Black
`Swamp filed a petition (Paper 1, “Petition”) requesting institution of a trial
`
`
`
`
`
`IPR2016-00167
`Patent 7,490,151 B1
`
`
`regarding the patentability of claims 1, 2, 6-8, and 12-14 of U.S. Patent No.
`7,490,151 (“the ’151 patent”). Black Swamp also filed concurrently a Motion for
`Joinder (Paper 2) with IPR2015-01047, which challenges the patentability of the
`same claims (i.e., claims 1, 2, 6-8, and 12-14) of the ’151 patent. A decision to
`institute in IPR2015-01047 was issued on October 7, 2015.
`During the conference call, the parties were advised that a Patent Owner
`Preliminary Response to the Petition in the present matter, if filed, is due by
`January 22, 2016.
`In consideration of the above, it is
`ORDERED that a Patent Owner Preliminary Response, if filed, is due not
`later than January 22, 2016.
`
`
`
`2
`
`
`PETITIONER:
`Thomas H. Martin
`Wesley C. Meinerding
`MARTIN & FERRARO, LLP
`tmartin@martinferraro.com
`wmeinerding@martinferraro.com
`
`PATENT OWNER:
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
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