Seeking Alpha

Tom Shaughnessy's  Instablog

Tom Shaughnessy
Send Message
Tom Shaughnessy is owner of SecretCaps.com, an independent investor and analyst. He has been investing in the stock market since the age of twelve. His style is comprehensive and includes multi-layered research on a concentrated set of stocks. Tom enjoys constructive dialogue regarding various... More
My company:
SecretCaps
  • New Bay LLC Is Authorized To File Motions To Terminate Their IPRs - Apple Can Not Oppose 8 comments
    Nov 1, 2013 10:10 AM | about stocks: VHC, AAPL, CSCO

    UNITED STATES PATENT AND TRADEMARK OFFICE _____________

    BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________

    NEW BAY CAPITAL, LLC Petitioner

    v.

    VIRNETX, INC. Patent Owner ____________

    Cases IPR2013-00375 (Patent 6,502,135 B1) IPR2013-00376 (Patent 7,490,151 B2) IPR2013-00377 (Patent 7,418,504 B2) IPR2013-00378 (Patent 7,921,211 B2)1

    ____________
    Before SALLY C. MEDLEY, MICHAEL P. TIERNEY, KARL D. EASTHOM,

    and STEPHEN C. SIU, Administrative Patent Judges. MEDLEY, Administrative Patent Judge.

    ORDER Conduct of the Proceeding 37 C.F.R. § 42.5

    1 This order addresses a similar issue in the four cases. Therefore, we exercise discretion to issue one order to be filed in each case. The parties, however, are not authorized to use this style of heading in subsequent papers.

    Case and Patent No. IPR2013-00375 - 6,502,135 B1 IPR2013-00376 - 7,490,151 B2 IPR2013-00377 - 7,418,504 B2 IPR2013-00378 - 7,921,211 B2

    On October 29, 2013, a conference call was held between counsel for the respective parties and Judges Medley, Tierney, Easthom and Siu.2

    The purpose of the conference call was for New Bay to seek Board authorization to file a motion to terminate the four proceedings. VirnetX does not oppose the filing of the motion.

    Counsel for New Bay explained that New Bay is abandoning the contest. Paper 12 at 8 (IPR2013-00375). The Board explained that a motion to terminate making such a representation would be construed as a request for adverse judgment under 37 C.F.R. § 42.73(b)(4). Based on the facts presented, the Board further explained that if the Board grants a motion to terminate, New Bay likely would be estopped from challenging the same VirnetX patents before the Office at a later time under 35 U.S.C. § 325(d). Paper 12 at 10. (Id.)

    Based on the facts of these proceedings, New Bay is authorized to file four motions to terminate the four proceedings briefly explaining that the motion is unopposed by VirnetX and why termination is appropriate in this case in accordance with the conference call held before the Board. Apple, as a third party, is not authorized to file an opposition to the motions to terminate.

    Accordingly, it is

    ORDERED that New Bay is authorized to file four motions to terminate the four proceedings;

    FURTHER ORDERED that the motions are due November 6, 2013; and

    2 Counsel for Apple, Inc. in related proceedings IPR2013-00348, -00349, -00354, - 00393, -00394, -00397, and -00398 was also on the call. A court reporter was present.

    2

    Case and Patent No. IPR2013-00375 - 6,502,135 B1 IPR2013-00376 - 7,490,151 B2 IPR2013-00377 - 7,418,504 B2 IPR2013-00378 - 7,921,211 B2

    FURTHER ORDERED that Apple, as a third party, is not authorized to file an opposition to the motions to terminate.

    3

    Case and Patent No. IPR2013-00375 - 6,502,135 B1 IPR2013-00376 - 7,490,151 B2 IPR2013-00377 - 7,418,504 B2 IPR2013-00378 - 7,921,211 B2

    For PETITIONER: Robert Asher

    rasher@sunsteinlaw.com

    Jeffrey Klayman

    jklayman@sunsteinlaw.com

    For PATENT OWNER: Joseph Palys

    joseph.palys@finnegan.com

    Naveen Modi

    naveen.modi@finnegan.com

    4

    VHC AAPL CSCO

    docs.google.com/file/d/0B0kIn6HCcQiAREFz...?usp=drive_web

    Disclosure: I am long VHC.

Back To Tom Shaughnessy's Instablog HomePage »

Instablogs are blogs which are instantly set up and networked within the Seeking Alpha community. Instablog posts are not selected, edited or screened by Seeking Alpha editors, in contrast to contributors' articles.

Comments (8)
Track new comments
  • R.S. Analytics
    , contributor
    Comments (241) | Send Message
     
    Thanks for posting this Tom - thanks for digging it up!!
    1 Nov 2013, 10:13 AM Reply Like
  • Tom Shaughnessy
    , contributor
    Comments (1105) | Send Message
     
    Author’s reply » Thanks R.S. - I added the bolding for some emphasis!
    1 Nov 2013, 10:19 AM Reply Like
  • gloriason
    , contributor
    Comments (39) | Send Message
     
    My only disappointment is that I don't think we will ever find out just who was behind the misguided attempt by New Bay to shake down VirnetX. Thanks for posting this Tom.
    1 Nov 2013, 10:29 AM Reply Like
  • Tom Shaughnessy
    , contributor
    Comments (1105) | Send Message
     
    Author’s reply » I agree Gloriason, It would have been interesting to see who was behind the curtain.

     

    Apple not being able to piggyback on New Bay's IPRs is amazing though.
    1 Nov 2013, 10:33 AM Reply Like
  • bernardc
    , contributor
    Comments (31) | Send Message
     
    Great reporting Tom. Do you think VirnetX might sue New Bay for attempted extorsion and collect legal fees?
    1 Nov 2013, 10:43 AM Reply Like
  • Tom Shaughnessy
    , contributor
    Comments (1105) | Send Message
     
    Author’s reply » Bernard,

     

    I am not sure, I think they probably could although they would rather just have it over with.
    1 Nov 2013, 10:52 AM Reply Like
  • cssdraw
    , contributor
    Comments (27) | Send Message
     
    Tom,
    This is great.. Thanks for your research. I sure wish I knew who was behind this... Who funded this fiasco. I hope someone is spanked in their wallet.
    2 Nov 2013, 09:24 AM Reply Like
  • Tom Shaughnessy
    , contributor
    Comments (1105) | Send Message
     
    Author’s reply » Thanks Cssdraw for your comment,

     

    I agree, I would love to know who was behind it.
    2 Nov 2013, 03:19 PM Reply Like
Full index of posts »
Latest Followers

StockTalks

  • Crossroads has taken on @MarkmanAdvisors for their patent monetization efforts. Congrats. $CRDS http://yhoo.it/1rUR37a ...
    1 day ago
  • RDX Technologies breaking above $0.30 http://seekingalpha.com/a/1fxgp $RGDEF $RDX.V
    3 days ago
  • Can anyone explain to me what a B-1 and B-2 warrants are? The ability to purchase 100% of the common stock?
    3 days ago
More »

Latest Comments


Instablogs are Seeking Alpha's free blogging platform customized for finance, with instant set up and exposure to millions of readers interested in the financial markets. Publish your own instablog in minutes.