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RPX Corporation v. VirnetX Inc.

Docket IPR2014-00176, Patent Trial and Appeal Board (Nov. 20, 2013)
Karl Easthom, Michael Tierney, Stephen Siu, presiding
Case TypeInter Partes Review
Patent7418504
Petitioner RPX Corporation
Patent Owner VirnetX Inc.
Patent Owner Science Application International
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62 Notice: Decision Motion to Expunge 37 CFR 4256

Document IPR2014-00176, No. 62 Notice - Decision Motion to Expunge 37 CFR 4256 (P.T.A.B. Sep. 9, 2014)
One redaction relates to specific fees, and another relates to specific language in the Addendum agreement (Ex. 2046), all of which primarily relates to the confidential business relationship between RPX and Apple, and none of which is ...
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59 Notice: Notice of Refund

Document IPR2014-00176, No. 59 Notice - Notice of Refund (P.T.A.B. Jul. 24, 2014)
Mailed: July 24, 2014 Before Althea Wilburn, Trial Paralegal.
Petitioner’s request for a refund of certain post-institution fees paid on November 20, 2013, in the above proceeding is hereby granted.
The amount of $16,800.00 has been refunded to Petitioner’s deposit account.
The refund request filed by Petitioner on July 14, 2014, incorrectly requested a refund of $15,600.00.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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57 Notice: Redacted Papet 49 Decision Denying Institution

Document IPR2014-00176, No. 57 Notice - Redacted Papet 49 Decision Denying Institution (P.T.A.B. Jul. 14, 2014)
Taylor, 553 U.S. at 893– 895, lists six categories that create an exception to the common law rule that normally forbids nonparty preclusion in litigation.
In General Foods, however, standing was only one of several factors identified by the court that helped to show that the members implicitly authorized the suit by the association.
We hold that, based on the record presented, the interactions between RPX and Apple show an implicit authorization to challenge the Virnetx Patents, even in the absence of the standing factor that contributed to the outcome in General Foods.
Apple’s interests include potentially avoiding payment of the damages awarded for infringement of the Virnetx Patents in the district court judgment.
Changes to the statutory structure “are not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks .
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53 Notice: ORDER Conduct of the Proceedings

Document IPR2014-00176, No. 53 Notice - ORDER Conduct of the Proceedings (P.T.A.B. Jun. 30, 2014)
1 This decision addresses an issue that is identical in each case.
We, therefore, exercise our discretion to issue one Order to be filed in each case.
As discussed during a June 13, 2014 conference call, the decision denying institution of the inter partes review stated that parties may request jointly that a redacted version of the decision be issued as the public decision.2 The parties conferred regarding potential redactions and submitted a proposed redacted version of the decision.
The Board has reviewed the proposed redacted decision and holds that it strikes the appropriate balance between the public’s interest in maintaining a complete and understandable file history and the parties’ interest in protecting sensitive information.
A more complete record may be found in the transcript, which is Ex. 1079.
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48 Notice: Redacted Patent Owners Response to Boards March 17, 2014 Order Paper No 37

Document IPR2014-00176, No. 48 Notice - Redacted Patent Owners Response to Boards March 17, 2014 Order Paper No 37 (P.T.A.B. Apr. 10, 2014)
Nonetheless, the Court concluded that Taylor could still meet the fifth category of preclusion, and remanded for a further determination on that issue.
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47 Notice: Redacted Petitioners Response to Boards Order of March 17, 2014

Document IPR2014-00176, No. 47 Notice - Redacted Petitioners Response to Boards Order of March 17, 2014 (P.T.A.B. Apr. 8, 2014)

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34 Notice: Third Party Redacted Proposal

Document IPR2014-00176, No. 34 Notice - Third Party Redacted Proposal (P.T.A.B. Feb. 26, 2014)

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