`571-272-7822
`
`
`
` Paper 33
`
`Entered: February 20, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION
`Petitioner,
`
`
`
`
`
`v.
`
`VIRNETX INC.
`Patent Owner.
`____________
`
`Case IPR2014-000171 (Patent 6,502,135)
`Case IPR2014-000172 (Patent 6,502,135)
`Case IPR2014-000173 (Patent 7,490,151)
`Case IPR2014-000174 (Patent 7,921,211)
`Case IPR2014-000175 (Patent 7,921,211)
`Case IPR2014-000176 (Patent 7,418,504)
`Case IPR2014-000177 (Patent 7,418,504)1
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`Decision
`Scope of Discovery
` 37 C.F.R. § 42.5
`
`
`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. Unless
`otherwise authorized, the parties, however, are not authorized to use this style
`heading for any subsequent papers.
`
`
`
`Case IPR2014-000171 (Patent 6,502,135); Case IPR2014-000172 (Patent
`6,502,135); Case IPR2014-000173 (Patent 7,490,151); Case IPR2014-000174
`(Patent 7,921,211); Case IPR2014-000175 (Patent 7,921,211); Case IPR2014-
`000176 (Patent 7,418,504); Case IPR2014-00177 (Patent 7,418,504)
`
`
`
`As stated during a February 7, 2014 conference call, the Board reviewed
`
`VirnetX’s motion for discovery and oppositions thereto. Based upon the specific
`
`facts of this proceeding, the Board determined that VirnetX had demonstrated that
`
`it is in the interests of justice that at least some discovery be permitted on the issue
`
`of control of the proceeding. To aid the Board in determining the scope of
`
`discovery to be permitted, the Board authorized the parties to file briefs by no later
`
`than February 11, 2014 where the briefs identified the scope of discovery to be
`
`permitted on the issue of control of the proceeding as it relates to questions of real
`
`party in interest and privity.
`
`
`
`The parties have submitted their briefs and the Board concludes that the
`
`scope of discovery identified in the Apple proposal is best calibrated to produced
`
`useful evidence relevant to VirnetX’s theory of privity and real-parties-in-interest.
`
`The Board orders (1) RPX to produce the information and response to the
`
`interrogatory identified in the Apple proposal within five business days of the entry
`
`this decision, and (2) Apple is to produce any responsive documents and its
`
`response to the interrogatory three business days after the date of service by RPX
`
`of responsive documents or information. No deposition is authorized of any
`
`witness at this time.
`
`
`
`
`
`2
`
`
`
`Case IPR2014-000171 (Patent 6,502,135); Case IPR2014-000172 (Patent
`6,502,135); Case IPR2014-000173 (Patent 7,490,151); Case IPR2014-000174
`(Patent 7,921,211); Case IPR2014-000175 (Patent 7,921,211); Case IPR2014-
`000176 (Patent 7,418,504); Case IPR2014-00177 (Patent 7,418,504)
`
`PETITIONER:
`
`Oliver R. Ashe, Jr.
`Gregory M. Howison
`HOWISON & ARNOTT, LLP
`oashe@ashepc.com
`ghowison@dalpat.com
`admin@dalpat.com
`
`PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`joseph.palys@finnegan.com
`naveen.modi@finnegan.com
`
`
`
`
`3
`
`
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