PTAB grants VirnetX additional discovery and ultimately denies IPR institution

Several patents owned by Finnegan client VirnetX were challenged through seven inter partes review (IPR) petitions filed by RPX. The facts suggested that RPX had been acting on behalf of another, unnamed time-barred entity. In the window between the filing of the petitions and the due date for its preliminary responses, VirnetX sought discovery on the relationship between RPX and the other entity. The Patent Trial and Appeal Board (PTAB) authorized VirnetX to file a motion for additional discovery and granted the motion—one of the few instances where the PTAB authorized, let alone granted, a motion for additional discovery. Leveraging the discovery in its preliminary responses, VirnetX secured non-institution decisions from the Board, which found that the petitioner was acting as proxy for the time-barred entity—the true real party-in-interest.