Takeaway: In a request for rehearing, the movant must focus on areas that were misapprehended or overlooked by the Board.

In its Decision, the Board granted-in-part Patent Owner’s Request for Rehearing on the Board’s Decision to deny Patent Owner’s Motion for Additional Discovery. In that Decision, the Board found that “Patent Owner has not met its burden in showing additional discovery is in the interests of justice as required under 37 C.F.R. § 42.51(b)(2).” Patent Owner argued in its Request for Rehearing that “[s]ince the Motion was directed to improperly omitted [real parties-in-interest] in particular, the evidence presented in the Motion only needed to show beyond speculation that something useful would be uncovered as to the [real party-in-interest] issues. The Motion certainly met this standard.”

The Board found most of Patent Owner’s arguments unpersuasive to demonstrate that it had misapprehended or overlooked any points. In particular, the Board disagreed that Patent Owner had met the standard of showing beyond speculation that something useful would be uncovered as to the real party-in-interest issues.

Patent Owner argued that “Ward Dietrich is Chief Operating Officer of the Mangrove Partners Master Fund” and “has no public role in petitioner,” but “Ward Deitrich held himself out as an ‘authorized person’ to sign the Power of Attorney on behalf of Petitioner.” This is unrefuted by Petitioner. Therefore, Patent Owner requested documents regarding the preparation, and control over the preparation, of the IPRs. The Board found that in light of Ward Deitrich’s alleged role as an officer of Mangrove Partners and the named Petitioner, it would grant Patent Owner’s motion for additional discovery for the limited purpose of providing communications and/or agreements pertaining to Ward Deitrich’s involvement in the preparation and filing of the Petition and/or control, or ability to control, the preparation and filing of the Petition.

Patent Owner also requested an expanded panel, including the Chief Judge, in order to secure and maintain uniformity, and to clarify the standard for additional discovery.   That request was considered and declined by the Acting Chief Administrative Patent Judge.

The Mangrove Partners Master Fund. Ltd., Apple Inc., and Black Swamp IP, LLC v. VirnetX, IPR2015-01047

Paper 39: Decision on Request for Rehearing

Dated: February 26, 2016

Patent 7,490,151 B2

Before: Michael P. Tierney, Karl D. Easthom, and Stephen C. Siu

Written by: Siu