`571-272-7822
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`
`
`
`
` Paper 8
`Entered: May 9, 2014
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE
`Petitioner,
`
`
`
`
`
`v.
`
`VIRNETX INC.
`Patent Owner.
`____________
`
`Case IPR2014-00485 (Patent 8,051,181)
`Case IPR2014-00486 (Patent 8,051,181)1
`____________
`
`Before TONI R. SCHEINER, MICHAEL P. TIERNEY, and
`KARL D. EASTHOM, Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
` 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 IPR2014-00485 (Patent 8,051,181); Case IPR2014-00486 (Patent 8,051,181)
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`
`
`Apple filed IPR2014-00485 and IPR2014-00486 along with motions seeking
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`to join petitions filed by Microsoft against U.S. Patent No. 7,987,274. Paper 3.
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`VirnetX filed an opposition to Apple’s motions for joinder. Paper 6. Apple
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`requested a conference call seeking to strike VirnetX’s oppositions as
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`unauthorized.
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`
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`A conference call with the parties was conducted on May 5, 2014. A court
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`reporter was present on the call.2 During the call the Board declined to strike
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`VirnetX’s oppositions but authorized Apple to file reply briefs. Apple’s reply
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`briefs are due no later than May 14, 2014.
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`
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`Apple and VirnetX are involved in a significant number of inter partes
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`reviews. During the call, the Board inquired if either party had materials that
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`would aid the Board’s understanding of the relationship between the various
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`reviews and the patents and claims challenged. Apple indicated that they had
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`previously prepared materials of this nature in another set of cases, and would
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`work with VirnetX to file a joint submission outlining these proceedings and how
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`they relate to one another.
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`2 This Order summarizes statements made during the conference call. A more
`complete record may be found in the transcript, which is to be filed by VirnetX.
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`
`
`2
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`
`
`Case IPR2014-00485 (Patent 8,051,181); Case IPR2014-00486 (Patent 8,051,181)
`
`PETITIONER:
`
`Jeffrey Kushan
`jkushan@sidley.com
`
`Joseph Micallef
`jmicallef@sidley.com
`
`
`PATENT OWNER:
`
`Joseph E. Palys
`joseph.palys@finnegan.com
`
`Naveen Modi
`naveen.modi@finnegan.com
`
`
`
`
`3
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`