Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 100
`Entered: January 22, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`Case IPR2015-01046
`Patent 6,502,135 B1
`________________________________________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC.,
`and BLACK SWAMP IP, LLC,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`Case IPR2015-01047
`Patent 7,490,151 B2
`________________________________________
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`KARL D. EASTHOM and JASON W. MELVIN, Administrative Patent
`Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 100
`Entered: January 22, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`Case IPR2015-01046
`Patent 6,502,135 B1
`________________________________________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC.,
`and BLACK SWAMP IP, LLC,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`Case IPR2015-01047
`Patent 7,490,151 B2
`________________________________________
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`KARL D. EASTHOM and JASON W. MELVIN, Administrative Patent
`Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`IPR2015-01046, Patent 6,502,135 B1
`IPR2015-01047, Patent 7,490,151 B2
`
`
`In IPR2015-01046 (“’46IPR”), the Mangrove Partners Master Fund,
`
`Ltd. and Apple Inc. (collectively “Petitioner”) requested inter partes review
`
`of claims 1, 3, 4, 7, 8, 10, and 12 of U.S. Patent No. 6,502,135 B1 (“the ’135
`
`patent”).1 The Board instituted reviews, conducted trials, and issued a Final
`
`Written Decision, holding claims 1, 2, 6–8, and 12–14 of the ’135 patent
`
`unpatentable. See ’46 IPR, Paper 71.
`
`In IPR2015-01047 (the “’47IPR”), the Mangrove Partners Master
`
`Fund, Ltd., Apple Inc., and Black Swamp IP, LLC (collectively “Petitioner”)
`
`requested inter partes review of claims 1, 2, 6–8, and 12–14 of U.S. Patent
`
`No. 7,490,151 B2 (“the ’151 patent”).2 The Board instituted reviews,
`
`conducted trials, and issued a Final Written Decision, holding claims 1, 2, 6–
`
`8, and 12–14 of the ’151 patent unpatentable. See ’47IPR, Paper 80.
`
`
`
`VirnetX Inc. (“Patent Owner”) appealed the Final Written Decision in
`
`each case. Pursuant to the appeal, the United States Court of Appeals for the
`
`Federal Circuit issued a decision vacating each Final Written Decision and
`
`remanding to consider an issue on the merits of unpatentability and to allow
`
`Patent Owner to file a motion for additional discovery to support its real
`
`party in interest contentions. See VirnetX Inc. v. The Mangrove Partners
`
`Master Fund, Ltd., Apple Inc., No 2017-1368, VirnetX Inc. v. The Mangrove
`
`Partners Master Fund, Ltd., Apple Inc., Black Swamp, No. 2017-1383, 2019
`
`WL 2912776 (Fed. Cir. July 8, 2019) (the “Remand”).
`
`
`1 Apple Inc. filed a petition in IPR2016-00062, and the Board joined it as a
`Petitioner in IPR2015-01046.
`2 Apple Inc. and Black Swamp IP, LLC respectively filed a petition in
`IPR2016-00063 and IPR2016-00167, and the Board joined each as a
`Petitioner in IPR2015-01047.
`
`2
`
`
`
`IPR2015-01046, Patent 6,502,135 B1
`IPR2015-01047, Patent 7,490,151 B2
`
`
`Pursuant to the Remand, during a teleconference, the Board instructed
`
`the parties to file a proposed briefing and discovery schedule and each party
`
`subsequently filed a respective schedule in each case. See ’46IPR, Paper 78;
`
`’46IPR, Paper 79; ’46IPR, Ex. 1047 (transcript of teleconference); ’47IPR,
`
`Paper 87; ’47IPR, Paper 88; ’47IPR Ex. 1047 (same transcript). After
`
`reviewing the parties’ proposed schedules, the Board set an Oral Hearing
`
`date to occur at 10 AM Eastern Time at the U.S. Patent & Trademark Office
`
`in Alexandria, Virginia on January 24, 2020. See ’46IPR, Paper 80; ’47IPR,
`
`Paper 89.
`
`Accordingly, the Oral Hearing will commence at 10 AM Eastern
`
`Time, on January 24, 2020 at the USPTO Headquarters, Ninth Floor of
`
`Madison Building East, 600 Dulany Street, Alexandria, Virginia. Each
`
`side will receive 60 minutes of total presentation time (including any
`
`rebuttal).
`
`Petitioner bears the ultimate burden on the real party in interest and
`
`unpatentability issues. Therefore, Petitioner will open the Oral Hearing by
`
`presenting its case regarding the noted issues. Patent Owner then will
`
`respond to Petitioner’s presentation. Petitioner may reserve rebuttal time (of
`
`no more than half their total presentation time) to reply to Patent Owner’s
`
`arguments. Patent Owner may reserve sur-rebuttal time (of no more than
`
`half its total presentation time) to respond to Petitioner’s rebuttal. See Trial
`
`Practice Guide Update, 20 (Aug. 2018), available at
`
`https://go.usa.gov/xU7GP.
`
`Each presenter must identify clearly and specifically each
`
`demonstrative exhibit (e.g., by slide or screen number) referenced during the
`
`Oral Hearing to ensure the clarity and accuracy of the reporter’s transcript.
`
`A hard copy of the demonstratives, if used, should be provided to the court
`
`3
`
`
`
`IPR2015-01046, Patent 6,502,135 B1
`IPR2015-01047, Patent 7,490,151 B2
`
`reporter at the Oral Hearing. Also, at the Oral Hearing, Petitioner and Patent
`
`Owner “may rely upon evidence that has been previously submitted in the
`
`proceeding and may only present argument relied upon in the papers
`
`previously submitted.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,768 (Aug. 14, 2012). “No new evidence or arguments may be
`
`presented at the oral argument.” Id.
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must have been
`
`served on the opposing party or parties seven (7) business days prior to the
`
`Oral Hearing. Demonstrative exhibits at the Oral Hearing constitute aids to
`
`argument rather than evidence.
`
`The Board expects that Petitioner and Patent Owner will have met and
`
`conferred in good faith to resolve any objections to demonstrative exhibits
`
`prior to the Oral Hearing. During the Oral Hearing, Petitioner and Patent
`
`Owner shall object, if at all, to demonstrative exhibits only during its
`
`respective argument (i.e., without interrupting the opposing presenter) and
`
`shall confine such objections to egregious violations prejudicial to the
`
`administration of justice. Petitioner and Patent Owner must file any
`
`demonstrative exhibits in the records at least one (1) business day prior to
`
`the Oral Hearing.
`
`The Board normally expects lead counsel for each side to be present
`
`in person at the Oral Hearing.3 However, any counsel of record, present in
`
`person, may present argument.
`
`Any special requests for audio-visual equipment should be directed to
`
`PTABHearings@uspto.gov. A party also may indicate any special requests
`
`
`3 The panel excuses counsel for Black Swamp IP, LLC from the Oral
`Hearing based on counsel’s email of January 21, 2020.
`
`4
`
`
`
`IPR2015-01046, Patent 6,502,135 B1
`IPR2015-01047, Patent 7,490,151 B2
`
`related to appearing at an in-person oral hearing, such as a request to
`
`accommodate physical needs that limit mobility or visual or hearing
`
`impairments, and indicate how the PTAB may accommodate the special
`
`request. Any special requests must be presented in a separate
`
`communication as soon as possible.
`
`So ORDERED.
`
`
`
`PETITIONER:
`
`Abraham Kasdan
`WIGGIN AND DANA LLP
`akasdan@wiggin.com
`
`James T. Bailey
`jtb@jtbaileylaw.com
`
`Jeffrey P. Kushan
`Thomas A. Broughan, III
`Scott M. Border
`SIDLEY AUSTIN LLP
`IPRNotices@sidley.com
`tbroughan@sidley.com
`sborder@sidley.com
`
`Thomas H. Martin
`Wesley C. Meinerding
`MARTIN & FERRARO, LLP
`tmartin@martinferraro.com
`docketing@martinferraro.com
`
`PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`5
`
`
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