`571-272-7822
`
`
`
`
`
` Paper 8
`Entered: May 9, 2014
`
`
`
`
`
`
`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)
`
`
`
`Apple filed IPR2014-00485 and IPR2014-00486 along with motions seeking
`
`to join petitions filed by Microsoft against U.S. Patent No. 7,987,274. Paper 3.
`
`VirnetX filed an opposition to Apple’s motions for joinder. Paper 6. Apple
`
`requested a conference call seeking to strike VirnetX’s oppositions as
`
`unauthorized.
`
`
`
`A conference call with the parties was conducted on May 5, 2014. A court
`
`reporter was present on the call.2 During the call the Board declined to strike
`
`VirnetX’s oppositions but authorized Apple to file reply briefs. Apple’s reply
`
`briefs are due no later than May 14, 2014.
`
`
`
`Apple and VirnetX are involved in a significant number of inter partes
`
`reviews. During the call, the Board inquired if either party had materials that
`
`would aid the Board’s understanding of the relationship between the various
`
`reviews and the patents and claims challenged. Apple indicated that they had
`
`previously prepared materials of this nature in another set of cases, and would
`
`work with VirnetX to file a joint submission outlining these proceedings and how
`
`they relate to one another.
`
`
`
`
`
`
`
`
`
`
`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.
`
`
`
`2
`
`
`
`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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