`571-272-7822 Entered: February 15, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MIAMI INTERNATIONAL HOLDINGS, INC.; MIAMI
`INTERNATIONAL SECURITIES EXCHANGE, LLC; MIAX PEARL,
`LLC; AND MIAMI INTERNATIONAL TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`NASDAQ ISE, LLC,
`Patent Owner.
`
`Cases CBM2018-00020 (Patent 8,386,371 B2);
`CBM2018-00021 (Patent 6,618,707 B1); CBM2018-00029 (Patent
`7,747,506 B2); CBM2018-00030 (Patent 7,921,051 B2); CBM2018-00031
`(Patent 7,246,093 B1); and CBM2018-00032 (Patent 7,933,827 B2)
`
`
`Before TONI R. SCHEINER, MEREDITH C. PETRAVICK, MICHAEL
`W. KIM, FRANCES L. IPPOLITO, KEVIN C. TROCK, and KRISTI L. R.
`SAWERT, Administrative Patent Judges.1
`
`SAWERT, Administrative Patent Judge.
`
`
`DECISION
`Granting-In-Part Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`1 This is not an expanded panel. The panel for CBM2018-00020,
`CBM2018-00029, CBM2018-00030, and CBM2018-00032 includes Judges
`Scheiner, Petravick, and Sawert. The panel for the other proceedings
`include Judges Kim, Ippolito, and Trock.
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`
`INTRODUCTION
`I.
`On October 11, 2018, Patent Owner filed a Motion for Additional
`Discovery. Paper 15 (“Motion” or “Mot.”).2 On October 18, 2018,
`Petitioner filed a Response. Paper 20 (“Response” or “Resp.”). Patent
`Owner filed a Reply on November 14, 2018. Paper 23 (“Reply”). And, on
`November 21, 2018, Petitioner filed a Sur-Reply. Paper 25 (“Sur-Reply”).
`The Board granted-in-part Patent Owner’s Motion in an Order dated January
`17, 2019. Paper 41 (“Order” or “Ord.”). Patent Owner filed a Request for
`Rehearing. Paper 45 (“Rehearing Request” or “Reh’g Req.”). For the
`following reasons, we grant-in-part and deny-in-part Patent Owner’s
`Rehearing Request.
`
`STANDARD OF REVIEW
`II.
`A party requesting rehearing bears the burden of showing that a
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`all matters it believes the Board misapprehended or overlooked, and the
`place where each matter was addressed previously in a motion, an
`opposition, or a reply. Id. When rehearing a decision, we review the
`
`
`2 The parties filed identical papers in CBM2018-00020, CBM2018-00021,
`and CBM2018-00031. Patent Owner requested to file motions for additional
`discovery in CBM2018-00029, CBM2018-00030, and CBM2018-00032 on
`the same basis. See Ex. 2016. We held that request in abeyance. See Paper
`21. The requested additional discovery would be substantially the same in
`all of these proceedings, and, thus, we include CBM2018-00029, CBM2018-
`00030, and CBM2018-00032 in this order as well. See Ex. 2016. For
`efficiency, we only refer to the papers filed in CBM2018-00021.
`2
`
`
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion occurs when a “decision was based on an erroneous conclusion of
`law or clearly erroneous factual findings, or . . . a clear error of judgment.”
`PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
`(Fed. Cir. 1988) (citations omitted).
`III. DISCUSSION
`Patent Owner requests that the Board reconsider its Order granting-in-
`part Patent Owner’s Motion for additional discovery. Reh’g Req. 1. Patent
`Owner argues that in granting less than all of its discovery requests, the
`Board misapprehended or overlooked the following matters:
`(1) it is undisputed that Fish participated in at least one joint
`teleconference with Reed Smith in connection with retaining Dr.
`Hendershott, demonstrating that Fish & Richardson (“Fish”) has,
`in fact, been involved in the Reed Smith proceedings; (2)
`independent of the obvious risk of exchanging confidential
`information, Fish’s prior representation of Nasdaq involved the
`same patents at issue in the Reed Smith CBMRs, violating the
`“the same or a substantially related matter” prong of Rule
`11.109(a); (3) Dr. Hendershott did not affirmatively testify that
`the identical portions of his declaration were prepared prior to
`engaging in more than pre-retention discussions with Fish: he
`repeatedly
`testified
`that he does not remember, which
`necessitates further discovery; and (4) the assumption that Dr.
`Hendershott prepared the identical portions of his declaration
`prior to engaging in more than pre-retention discussions with
`Fish is inconsistent with his testimony that Fish was “primarily”
`responsible for his understanding of the law of 35 U.S.C. § 101.
`Much of Dr. Hendershott’s declaration depends upon that
`understanding.
`
`
`
`3
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`Id. Patent Owner argues that each of these matters warrant full discovery as
`set forth in Patent Owner’s discovery requests. Id. at 1–2; see also Ex. 2015.
`A. The Order
`In its Order, the Board analyzed whether Patent Owner had met the
`good-cause standard for its additional discovery requests in accordance with
`the Bloomberg factors. Ord. 5 (citing 37 C.F.R. § 42.224(a); Bloomberg Inc.
`v. Markets-Alert Pty Ltd., CBM2013-00005, slip op. at 5 (May 29, 2013)
`(Paper 32) (precedential)). The Board authorized Interrogatory 13 and
`Discovery Request 1,4 as “relevant information only in the position of Fish
`and Reed Smith (Bloomberg Factor 3).” Id. at 10. In particular, the Board
`was persuaded that a pre-retention telephone discussion between Fish, Reed
`Smith, and Dr. Hendershott about Dr. Hendershott’s qualifications and
`knowledge “carries some risk that confidential factual information could
`have found its way from Fish to the proceedings concerning the Nasdaq
`
`
`3 Interrogatory 1 relates to “a list of any meetings . . . that occurred involving
`both Reed Smith and Fish and Richardson relating to the MIAX CBMs.”
`Ex. 2015, 3.
`4 Discovery Request 1 reads: “All documents and things in MIAX’s
`possession, custody, and/or control that were communicated from Fish and
`Richardson to which Reed Smith is a recipient, or vice versa, and that are
`related to the MIAX CBMs.” Ex. 2015, 5.
`4
`
`
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`patents.” Id. at 9. The Board denied related Interrogatories 2,5 3,6 and 4,7
`also related to the risk of confidential factual information flowing from Fish
`to Reed Smith, because those interrogatories pertained to questions where
`“an answer has either been, or could have been, obtained during Dr.
`Hendershott’s deposition (Bloomberg Factor 3).” Id. at 10 (citing Ex. 2020,
`54:14–55:15, 47:11–48:6; Ex. 1059 ¶ 6).
`The Board also denied Patent Owner’s discovery requests related to
`the writing and editing of certain common paragraphs found in Dr.
`Hendershott’s Declarations. Id. at 10–11. The Board was unpersuaded that
`a substantial risk that confidential factual information could have found its
`way from Fish to the proceedings concerning the Nasdaq patents because the
`evidence of record showed that the common paragraphs “were prepared by
`Dr. Hendershott, in conjunction with Reed Smith, prior to Dr. Hendershott
`engaging in more than general pre-retention discussions with Fish.” Id. at 9
`(citing Ex. 1062, 47:20–48:6, 54:14–56:14; Ex. 1063, 110:6–111:4, 133:3–
`9). For this reason, the Board denied Interrogatory 58 and Document
`
`
`5 Interrogatory 2 relates to “a list of any meetings . . . that occurred involving
`both Reed Smith and Dr. Hendershott relating to the MIAX CBMs.” Ex.
`2015, 4.
`6 Interrogatory 3 relates to “a list of any meetings . . . that occurred involving
`both Fish and Richardson and Dr. Hendershott relating to the MIAX
`CBMs.” Ex. 2015, 4.
`7 Interrogatory 4 asks “who originally drafted paragraphs 18–36 of the
`declaration by Dr. Hendershott.” Ex. 2015, 4.
`8 Interrogatory 5 asks for “a list of any individuals who edited paragraphs
`18–36 of the declaration by Dr. Hendershott.” Ex. 2015, 4.
`5
`
`
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`Request 2,9 and related Document Request 3.10 Id. at 10–11.
`Finally, the Board denied Interrogatory 611 as “involv[ing] both the
`underlying bases for litigation positions (Bloomberg Factor 2), as well as
`‘impressions, conclusions, opinions, or legal theories.’” Id. at 10 (quoting
`FED. R. CIV. PROC. 26(b)(3)(B)). And the Board denied Document
`Request 412 as “overly burdensome (Bloomberg Factor 5).” Id. at 11.
`B. The Relevant Ethics Rules
`Patent Owner argues that the Board misapprehended and misapplied
`the relevant ethics rules. Reh’g Req. 2–3. We grant Patent Owner’s request
`
`
`9 Document Request 2 reads: “All documents and things in MIAX’s
`possession, custody, and/or control that were communicated from Fish and
`Richardson to which Dr. Hendershott is a recipient, or vice versa, and that
`communicate desired contents and edits on the text that would become
`paragraphs 18–36 of Dr. Hendershott’s declaration (Ex. 1003).”
`Ex. 2015, 5.
`10 Document Request 3 reads: “All documents and things in MIAX’s
`possession, custody, and/or control that were communicated from Reed
`Smith to which Dr. Hendershott is a recipient, or vice versa, and that
`communicate desired contents and edits on the text that would become
`paragraphs 18–36 of Dr. Hendershott’s declaration (Ex. 1003).” Ex. 2015,
`5.
`11 Interrogatory 6 relates to “how Dr. Hendershott was identified and hired to
`serve as an expert on this CBM, including who at Fish, MIAX, or Reed
`Smith first contacted Dr. Hendershott relating to the MIAX CBMs and how
`Fish and Reed Smith identified Dr. Hendershott as an expert.” Ex. 2015, 4.
`12 Document Request 4 reads: “All documents and things in MIAX’s
`possession, custody and/or control communicated to both Fish and
`Richardson and Reed Smith as recipients, and that are related to the MIAX
`CBMs.” Ex. 2015, 5.
`
`
`
`6
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`for rehearing as to the applicable ethics rules. We take this opportunity to
`clarify the ethics rules and their application to this case.
`Subpart D of 37 C.F.R. Part 11—the USPTO Rules of Professional
`Conduct—applies to all post-grant procedures before the Office. See 37
`C.F.R. § 11.1 (“This part governs solely the practice of patent, trademark,
`and other law before the United States Patent and Trademark Office . . . .”);
`see also id. § 11.101 et. seq. At issue in this case is 37 C.F.R. § 11.109—
`“Duties to former clients.” Section 11.109(a) provides that “[a] practitioner
`who has formerly represented a client in a matter shall not thereafter
`represent another person in the same or a substantially related matter in
`which that person’s interests are materially adverse to the interests of the
`former client unless the former client gives informed consent, confirmed in
`writing.” Section 11.109(c) provides that:
`A practitioner who has formerly represented a client in a
`matter or whose present or former firm has formerly represented
`a client in a matter shall not thereafter:
`(1) Use information relating to the representation to the
`disadvantage of the former client except as the USPTO Rules of
`Professional Conduct would permit or require with respect to a
`client, or when the information has become generally known; or
`(2) Reveal information relating to the representation
`except as the USPTO Rules of Professional Conduct would
`permit or require with respect to a client.
`
`
`
`
`
`
`7
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`
`It is undisputed in this case that Fish formerly represented Nasdaq
`Inc., and prosecuted the patents at issue in the Reed Smith CBMs (i.e.,
`CBM2018-00029, CBM2018-00030, and CBM2018-00032). Ord. 3. It is
`also undisputed in this case that Fish currently represents Petitioner in the
`Fish CBMs (i.e., CBM2018-00020, CBM2018-00021, and CBM2018-
`00031), but did not prosecute the patents at issue in those cases. Id. We
`understand that Patent Owner seeks to disqualify Fish in the Fish CBMs, and
`seeks to move for sanctions against both Fish and Reed Smith in the Reed
`Smith CBMs. Reh’g Req. 3.
`As to the Fish CBMs, there appears to be no dispute that that the
`applicable rule is 37 C.F.R. § 11.109(a). Id. To be sure, Fish “formerly
`represented a client in a matter”—i.e., Nasdaq, in the prosecution of the
`Nasdaq patents—and thus, “shall not thereafter represent another person in
`the same or a substantially related matter in which that person’s interests are
`materially adverse to the interests of the former client.” 37 C.F.R.
`§ 11.109(a). The question in the Fish CBMs, therefore, is whether Fish’s
`representation of Petitioner in the Fish CBMs qualifies as “the same or a
`substantially related matter in which” Petitioner’s “interests are materially
`adverse to the interests of” Nasdaq. Id.
`Part 11 of the 37 C.F.R. does not define a “substantially related”
`matter. See 37 C.F.R. § 11.1. Thus, as we did in the Order, we look to
`comment 3 to the ABA Model Rule 1.9, which defines “substantially
`related” as “involv[ing] the same transaction or legal dispute or if there
`
`
`
`8
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`otherwise is a substantial risk that confidential factual information as would
`normally have been obtained in the prior representation would materially
`advance the client’s position in the subsequent matter.” MODEL RULES OF
`PROF’L CONDUCT r. 1.9 cmt. 3 (AM. BAR ASS’N 2011). Because the Fish
`CBMs do not involve the “same transaction or legal dispute,” there appears
`to be no dispute that “substantial risk” is the relevant language here. See
`Reh’g Req. 3 (“Patent Owner seeks to disqualify Fish under the second
`prong . . . .”).
`Turning to the Reed Smith CBMs, Patent Owner asserts that “any
`involvement from Fish is an ethical violation under the first prong” of the
`“substantially related” definition. Id. at 3. Upon reconsideration of the
`ethics rules, however, we believe that Fish’s alleged involvement in the
`Reed Smith CBMs does not implicate 37 C.F.R. § 11.109(a). In this regard,
`§ 11.109(a) applies when a practitioner “thereafter represent[s]” a second
`client materially adverse to the practitioner’s former client, and here, Fish
`does not represent Petitioner in the Reed Smith CBMs. At most, then, Fish’s
`alleged involvement falls under § 11.109(c), which would prohibit Fish from
`“us[ing] information related” to its prosecution of the Nasdaq patents “to the
`disadvantage of” Nasdaq, see 37 C.F.R. § 11.109(c)(1), or “reveal[ing]
`information relating” to the same, see 37 C.F.R. § 11.109(c)(2). Thus, the
`pertinent question as to the Reed Smith CBMs is whether Fish used or
`revealed information to Reed Smith relating to its prosecution of the Nasdaq
`patents.
`
`
`
`9
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`
`As a final matter, we address Patent Owner’s argument that any
`activity by Fish conducted in concert with Reed Smith—such as Fish leading
`the discussion with Dr. Hendershott during the pre-retention telephone
`call—constitutes an ethical violation because Fish prosecuted the Nasdaq
`patents. Reh’g Req. 5–9. We are unaware of any such per se rule. Ord. 7.
`Instead, we must follow the controlling authority, which, as we clarified
`above, is 37 C.F.R. § 11.109(c). Patent Owner cites multiple cases for the
`proposition that “an attorney who represented a client during prosecution of
`a patent application will not be permitted to represent a party attacking the
`validity of the resulting patent.” Reh’g Req. 7 (citing Strojirenstvi v.
`Toyoda, 1986 Comm’r Pat. LEXIS 14 (Comm’r Pat. Aug. 29, 1986)).
`Although we, of course, agree, Patent Owner’s argument overlooks the fact
`that Fish is not representing Petitioner in the Reed Smith CBMs.
`C. Patent Owner’s Discovery Requests
`We now turn to Patent Owner’s individual discovery requests. As an
`initial matter, we note that Patent Owner submits no arguments in the
`Rehearing Request challenging the Board’s conclusion that Document
`Request 4 would be overly burdensome under Bloomberg Factor 5. See
`generally Reh’g Req. Thus, we deny Patent Owner’s request for rehearing
`as to Document Request 4. See Ord. 11. We also note that Patent Owner
`submits no arguments challenging the Board’s conclusion that Interrogatory
`6 is improper under Bloomberg Factor 2 and FED. R. CIV. PROC. 26(b)(3)(B).
`See generally Reh’g Req. Thus, we also deny Patent Owner’s request for
`
`
`
`10
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`rehearing as to Interrogatory 6. See Ord. 10. As to the remaining
`interrogatories and discovery requests, we grant Patent Owner’s request for
`rehearing for the reasons explained below.
`1. Discovery requests related to preparation of, and edits to,
`paragraphs 18–36 of Dr. Hendershott’s Declarations
`Interrogatories 4 and 5, and Discovery Requests 2 and 3, relate to the
`questions of who prepared and edited paragraphs 18–36 of Dr. Hendershott’s
`declarations.13 As explained above, the Board was “unpersuaded that
`additional discovery into document preparation and edits are warranted.”
`Ord. 9. The Board found that Dr. Hendershott prepared paragraphs 18–36 of
`his declarations before he was engaged in more than general pre-retention
`discussions with Fish. Ord. 10 (citing Ex. 2020, 47:11–48:6, 55:24–56:14,
`110:6–111:4, 133:3–9).
`Patent Owner argues that, in so doing, the Board “misapprehends or
`overlooks that Dr. Hendershott’s answers to questions about the sequence of
`events and the involvement of Reed Smith and Fish in the drafting and
`editing his declaration were far from definitive.” Reh’g Req. 11. Patent
`Owner argues that Dr. Hendershott instead “equivocated and qualified his
`answers concerning when individual paragraphs were prepared, and who
`provided input and edits when.” Id. at 11–12 (citing Paper 38, 3–5). Patent
`
`13 The common paragraphs’ numbering vary depending on the case. For
`example, in CBM2018–00020, the common paragraphs are ¶¶ 17–35. See
`Mot. 7. In CBM2018-00021, the common paragraphs are ¶¶ 18–35. Id. For
`efficiency, we refer to the paragraphs relevant in CBM2018-00021.
`
`
`
`
`11
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`Owner also argues that “Dr. Hendershott made statements that show or at
`least suggest that Fish was involved in the initial drafting” of his declaration.
`Id. at 12 (citing Paper 38, 3–5). “Thus,” Patent Owner argues, “the evidence
`of record does not support the Board’s assumption that all of the identical
`paragraphs of Dr. Hendershott’s declaration were prepared for Reed Smith
`prior to Dr. Hendershott engaging in more than general pre-retention
`discussions with Fish.” Id.
`Patent Owner also argues that “[t]he Board’s assumption that Dr.
`Hendershott prepared the identical portions of his declaration prior to
`engaging in more than general pre-retention discussions with Fish is
`inconsistent with Dr. Hendershott’s testimony” that “attorneys from Fish had
`been ‘primarily’ responsible for providing him with an understanding of
`§ 101.” Id. at 13 (citing Paper 38, 2). According to Patent Owner, this
`“critical admission” undermines the Board’s conclusion that Fish spoke to
`Dr. Hendershott only as to his CV and general knowledge. Id.
`Upon reconsideration, we agree with Patent Owner that the timing of
`Dr. Hendershott’s preparation and the editing of common paragraphs 18–36
`is unclear on the current record. For example, Dr. Hendershott testified that
`he could not remember whether Fish suggested that he provide a history of
`Wall Street and the exchanges, which are embodied in paragraphs 18–36.
`See Ex. 1062, 53:14–19. Dr. Hendershott also testified that he received from
`Fish versions of his declaration containing edits, but did not remember
`whether any of those edits were substantive in nature. See id. at 51:19–25,
`
`
`
`12
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`52:8–22. Dr. Hendershott also did not review the edits to his declarations
`and thus was arguably not prepared to testify as to the circumstances
`surrounding the creation and editing of the common paragraphs. See id. at
`58:2–8. Thus, we grant Interrogatories 4 and 5 and Discovery Request 2, as
`relevant information only in the possession of Fish and Reed Smith
`(Bloomberg Factor 3).
`We deny Document Request 3, however, because we remain
`unpersuaded that it is relevant to showing that confidential information
`could have found its way from Fish to Reed Smith. Ord. 11. In particular,
`Document Request 3 relates to information flowing from Reed Smith to Dr.
`Hendershott, and is therefore not relevant to whether Fish used or revealed
`information to Reed Smith relating to its prosecution of the Nasdaq patents.
`2. Discovery requests related to meetings between counsel
`and Dr. Hendershott
`Interrogatories 2 and 3 request information related to any meetings
`that occurred between Reed Smith and Dr. Hendershott, and between Fish
`and Dr. Hendershott, respectively. The Board denied these interrogatories
`because “as an answer has either already been, or could have been, obtained
`during Dr. Hendershott’s deposition (Bloomberg Factor 3).” Ord. 10. The
`Board relied on Dr. Hendershott’s testimony that, other than the initial pre-
`hiring telephone call, no meeting occurred that was attended by him, Fish,
`and Reed Smith. Id. (citing Ex. 2020, 54:14–55:15).
`We are unable to discern any argument in Patent Owner’s Rehearing
`Request directly relevant to Interrogatories 2 and 3. Moreover, it appears to
`13
`
`
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`CBM2018-00030 (Patent 7,921,051 B2)
`CBM2018-00031 (Patent 7,246,093 B1)
`CBM2018-00032 (Patent 7,933,827 B2)
`
`us that any relevant information that could be obtained from Petitioners’
`response to these interrogatories would be duplicative from that obtained
`from Interrogatory 1. Thus, we deny Patent Owner’s request for rehearing
`as to Interrogatories 2 and 3. See Ord. 10.
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Rehearing Request is granted as to
`the applicable ethics rules, Interrogatory 4, Interrogatory 5, and Document
`Request 2;
`FURTHER ORDERED that Petitioner is given seven (7) business
`days from the date of this Order to respond to Interrogatory 4, Interrogatory
`5, and to produce the indicated items responsive to Document Request 2;
`FURTHER ORDERED that Patent Owner’s Rehearing Request is
`denied as to Interrogatory 2, Interrogatory 3, Interrogatory 6, Document
`Request 3, and Document Request 4; and
`FURTHER ORDERED that, in CBM2018-00020, CBM2018-00021,
`and CBM2018-00031, each party is authorized to file a five (5) page
`Supplemental Brief, within fifteen business (15) days of this Order, limited
`to explaining how any additional discovery produced relates to Patent
`Owner’s Motion to Disqualify Petitioner’s Counsel.
`
`
`
`14
`
`
`
`
`CBM2018-00020 (Patent 8,386,371 B2)
`CBM2018-00021 (Patent 6,618,707 B1)
`CBM2018-00029 (Patent 7,747,506 B2)
`
`CBM2018-00030 (Patent 7,921,051 B2)
`
`CBM2018-00031 (Patent 7,246,093 B1)
`
`CBM2018-00032 (Patent 7,933,827 B2)
`
`
`PETITIONER:
`
`Walter Renner
`axf-ptab@fr.com
`
`Thomas Rozylowicz
`tar@fr.com
`
`Andrew Patrick
`patrick@fr.com
`
`Mark Hatch-Miller
`mhatch-miller@susmangodfrey.com
`
`
`PATENT OWNER:
`
`Robert Sokohl
`rsokohl-ptab@sternekessler.com
`
`Richard D. Coller III
`rcoller-ptab@sternekessler.com
`
`Richard M. Bemben
`rbemben-ptab@sternekessler.com
`
`
`
`15
`
`