Trial@uspto.gov
`571-272-7822
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` Paper 20
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`Entered: February 14, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`
`
`Case IPR-2012-00001
`Patent 6,778,074
`
`
`Before MICHAEL P. TIERNEY, Lead Administrative Patent Judge, JAMESON
`LEE, and JOSIAH C. COCKS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Authorizing Motion For Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`A conference call was held this morning between respective counsel of
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`
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`petitioner (Garmin) and patent owner (Cuozzo), and Judges Tierney, Lee, and
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`Cocks, to discuss whether to authorize Cuozzo’s request to file a motion for
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`additional discovery. Prior to the presentation by Cuozzo, we articulated a general
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`571-272-7822
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` Paper 20
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`Entered: February 14, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`v.
`
`CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`
`
`Case IPR-2012-00001
`Patent 6,778,074
`
`
`Before MICHAEL P. TIERNEY, Lead Administrative Patent Judge, JAMESON
`LEE, and JOSIAH C. COCKS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Authorizing Motion For Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`A conference call was held this morning between respective counsel of
`
`
`
`petitioner (Garmin) and patent owner (Cuozzo), and Judges Tierney, Lee, and
`
`Cocks, to discuss whether to authorize Cuozzo’s request to file a motion for
`
`additional discovery. Prior to the presentation by Cuozzo, we articulated a general
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`Case IPR 2012-00001
`Patent 6,778,074
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`guideline and certain factors we regard as important for evaluating discovery
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`requests.
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`
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`Under the Leahy-Smith America Invents Act, discovery is available for the
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`deposition of witnesses submitting affidavits or declarations and for “what is
`
`otherwise necessary in the interest of justice.” 35 U.S.C. § 316(a)(5); see also
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`37 C.F.R. § 42.51(b)(2)(“The moving party must show that such additional
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`discovery is in the interest of justice ….”). That is significantly different from the
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`scope of discovery generally available under the Federal Rules of Civil Procedure.
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`
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`From the legislative history of the Leahy-Smith America Invents Act, we
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`know that discovery is limited as compared to that available in district court patent
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`litigation. Limited discovery lowers the cost, minimizes the complexity, and
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`shortens the period required for dispute resolution. Given the one-year statutory
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`deadline for completion of Inter Partes Review, the Board will be conservative in
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`granting additional discovery.
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`
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`The statutory standard is “necessary in the interest of justice.” That standard
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`is not a mathematical formula, but these factors are important:
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`1. More Than A Possibility And Mere Allegation -- The mere
`possibility of finding something useful, and mere allegation that
`something useful will be found, are insufficient to demonstrate that
`the requested discovery is necessary in the interest of justice. The
`party requesting discovery should already be in possession of
`evidence tending to show beyond speculation that in fact something
`useful will be uncovered.
`
`Litigation Positions And Underlying Basis -- Asking for the
`2.
`other party’s litigation positions and the underlying basis for those
`positions is not necessary in the interest of justice. The Board has
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`Case IPR 2012-00001
`Patent 6,778,074
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`established rules for the presentation of arguments and evidence.
`There is a proper time and place for each party to make its
`presentation. A party may not attempt to alter the Board’s trial
`procedures under the pretext of discovery.
`
`Ability To Generate Equivalent Information By Other Means –
`3.
`Information a party can reasonably figure out or assemble without a
`discovery request would not be in the interest of justice to have
`produced by the other party. In that connection, the Board would
`want to know the ability of the requesting party to generate the
`requested information without need of discovery.
`
`Easily Understandable Instructions -- The questions should be
`4.
`easily understandable. For example, ten pages of complex
`instructions for answering questions is prima facie unclear. Such
`instructions are counter-productive and tend to undermine the
`responder’s ability to answer efficiently, accurately, and confidently.
`
`Requests Not Overly Burdensome To Answer -- The requests
`5.
`must not be overly burdensome to answer, given the expedited nature
`of Inter Partes Review. The burden includes financial burden, burden
`on human resources, and burden on meeting the time schedule of Inter
`Partes Review. Requests should be sensible and responsibly tailored
`according to a genuine need.
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`Cuozzo’s original requests are attached to this communication. During the
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`
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`conference call, after being advised of the above-noted factors of consideration,
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`Cuozzo voluntarily withdrew many of the listed items. However, many remain.
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`The only secondary consideration of unobviousness mentioned by Cuozzo during
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`the conference call was long-felt and unresolved need in the industry. We stated
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`that any reference to “market” should be specific as to which “market” and that
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`Case IPR 2012-00001
`Patent 6,778,074
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`with regard to secondary considerations and objective evidence of unobviousness,
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`Cuozzo must address the issue of nexus in a motion for additional discovery.
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`
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`Cuozzo indicated that it disputes the Board’s claim interpretation with
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`regard to the requirements of claim 10. We indicated that a motion for additional
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`discovery is not the place to argue about and resolve disputes in claim
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`interpretation. Cuozzo should reserve those arguments for its patent owner
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`response. In a motion for additional discovery, for any claim interpretation issues
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`that matter, Cuozzo need only indicate its own claim construction and how its
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`discovery request is necessary in light of that construction. Similarly, in an
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`opposition to additional discovery, Garmin should not argue and present evidence
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`on claim interpretation; Garmin’s simply indicating its position on claim
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`construction would be sufficient.
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`
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`It is
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`ORDERED that Cuozzo is authorized to file a motion for additional
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`discovery under 37 C.F.R. § 42.51(b)(2) by February 21, 2013, limited to 15 pages;
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`Garmin is authorized to file an opposition by February 28, 2013, also limited to 15
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`pages; and no reply is authorized;
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`
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`FURTHER ORDERED that in its motion, Cuozzo should specifically
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`address each of the above-noted factors and apply them to each item of requested
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`discovery;
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`FURTHER ORDERED that Cuozzo’s motion should note, for each item of
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`requested discovery, the purpose for seeking the item and how the information
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`sought, in the best of circumstances, would assist in the presentation of patent
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`-4-
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`owner’s response;
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`Case IPR 2012-00001
`Patent 6,778,074
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`FURTHER ORDERED that in particular Cuozzo should explain in its
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`motion why with respect to objective evidence of nonobvious such as long-felt but
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`unresolved need Cuozzo has to ask Garmin for any information and is otherwise
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`unable to ascertain the state of the art including general conditions in the art
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`otherwise;
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`FURTHER ORDERED that in its motion Cuozzo should provide an
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`explanation of why it has submitted such an extensive set of discovery request at
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`this late date with just twenty-five (25) days remaining until the due date for the
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`patent owner’s response; note that during the initial conference call conducted on
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`January 23, 2013, Cuozzo had no problem with the March 11, 2013 due date set
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`for Time Period 1; and
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`FURTHER ORDERED that Garmin in its opposition to the motion should
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`indicate with particularity the burden the discovery request imposes on Garmin,
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`including financial burden, burden on human resources, and burden to meet
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`deadlines in this proceeding.
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`Case IPR 2012-00001
`Patent 6,778,074
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`For PETITIONERJennifer C. Bailey
`
`HOVEY WILLIAMS LLP
`jcb@hoveywilliams.com
`
`For PATENT OWNER
`
`John R. Kasha
`Kasha Law LLC
`john.kasha@kashalaw.com
`
`Cabrach J. Connor
`Reed & Scardino LLP
`cconnor@reedscardino.com
`
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`-6-
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`February 11, 2013
`
`
`
`Via Electronic Mail
`
`Jennifer C. Bailey
`Hovey Williams LLP
`10801 Mastin Blvd., Suite 1000
`84 Corporate Woods
`Overland Park, KS 66210
`jbailey@hoveywilliams.com
`
`
`Re: Garmin International, Inc., et al. v. Cuozzo Speed Technologies LLC;
`Case IPR2012-0001 (JL); Patent No. 6,778,074
`
`
`Dear Jennifer:
`
`
`I write on behalf of patent owner Cuozzo Speed Technologies LLC seeking
`Petitioner’s agreement to present a witness or witnesses to testify on behalf of the
`Petitioner at a mutually agreeable location and date. The topics of the examination
`would relate to matters at issue in the IPR. These include, generally: (i) Garmin’s
`efforts to design, develop, and commercialize a speed limit warning feature; (ii)
`Garmin’s discussions with the inventor G. Cuozzo prior to CST’s lawsuit; (iii)
`Garmin’s marketing of the speed alert/warning feature; and (iv) Garmin’s views of the
`success of the speed alert /warning feature in the marketplace.
`
`
`Please let me know if Petitioner will agree to present a witness or witnesses and
`some available dates for the deposition. If Petitioner will not, please let me know when
`you are available for a conference call with the Board so CST can formally request this
`additional discovery.
`
`
`
`
`Sincerely,
`/s/ Cabrach J. Connor
`Cabrach J. Connor
`
`
`cc:
`
`John Kasha; David Skeels
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`
`
`v.
`
`
`
`CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`
`____________
`
`
`
`Case IPR2012-00001
`Patent 6,778,074
`
`____________
`
`
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`CUOZZO SPEED TECHNOLOGIES LLC’S FIRST SET
`OF INTERROGATORIES TO GARMIN (NOS. 1-19)
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`Patentee Cuozzo Speed Technologies LLC (“CST”) requests Petitioners
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`Garmin International, Inc. and Garmin USA, Inc. serve written responses to these
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`Interrogatories
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`to CST’s
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`lead and back-up counsel within 14 days.
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`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
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`DEFINITIONS AND INSTRUCTIONS
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`The following definitions and instructions shall apply to each of the
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`interrogatories herein:
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`1.
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`The terms “Petitioner,” “You,” “Garmin International, Inc.,”
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`“Garmin USA, Inc.,” or “Garmin” mean Petitioners Garmin International, Inc. and
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`Garmin USA, Inc. and include any parents, predecessors, subsidiaries, affiliates,
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`divisions, associated organizations, joint ventures, present and former officers,
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`directors, trustees, employees, staff members, agents, or other representatives,
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`including counsel and patent agents, in any country.
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`2.
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`The term “Privy” or “Privies” refers to Garmin Ltd., JVC
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`Americas Corporation, JVC Kenwood Corporation, Chrysler Group LLC, Fiat
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`North America LLC, Fiat S.p.A., UAW Retiree Medical Benefits Trust, and any
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`other party in privity with Petitioners with respect to the products accused of
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`infringement by CST.
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`3.
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`The term “Cuozzo Speed” or “CST” or “Patentee” means
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`Cuozzo Speed Technologies LLC.
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`4.
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`The term “Third Party” means a Person other than CST or
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`Garmin or any Privy.
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`5.
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`“Complaint” means the Complaint filed by CST on June 15,
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`2012, and the Amended Complaint filed by CST on or about August 20, 2012,
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`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
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`2
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`(Dkt. No. 35) in the United States District Court for the District of New Jersey;
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`Cuozzo Speed Technologies LLC v. Garmin Int’l, Inc. et al. Civil Action No. 2:12-
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`cv-03623-CCC-JAD; U.S.D.C. for the District of New Jersey.
`
`6.
`
`The terms “the Accused Product” or “the Accused Products”
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`means speed limit indicator products, packages, systems, or vehicle equipment
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`intended to provide an alert if the vehicle speed exceeds the speed limit for the
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`vehicle’s location or for determining vehicle speed, the relevant speed limit, and
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`displaying or delineating on a display speeds that are in excess of the speed limit.
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`Accused Products include without limitation the Garmin, JVC, and Chrysler
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`products identified in CST’s Complaints and infringement contentions.
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`7.
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`The terms “Person” or “Persons” shall include both natural
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`persons, corporate or other business entities, and all other forms of legal entities,
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`and shall include, but is not limited to the following: corporations, partnerships,
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`limited liability companies, joint ventures, associations, business organizations,
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`trade organizations, standards organizations, and sole proprietorships.
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`8.
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`The term “Date” means the exact day, month, and year, if
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`ascertainable, or, if not, the best approximation (including relationship to other
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`events).
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`9.
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`The term “Document” has the broadest meaning accorded that
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`term by Federal Rule of Civil Procedure 34(a) and includes, but is not limited to,
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`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
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`3
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`all of the items defined in Federal Rule of Evidence 1001, and all preliminary and
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`final drafts of any such item. The term shall include, but not be limited to, all
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`written, electronic, phonic, graphic, and recorded matter of every type and
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`description and every tangible thing that is or has been in Your possession,
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`custody, or control, to which You have access, or of which You have knowledge.
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`“Documents” shall also include, but shall not be limited to, the following items,
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`whether printed or recorded or reproduced by hand: agreements, contracts, leases,
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`communications (including intra-organization communications), electronically
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`stored information including without limitation electronic mail, data from Personal
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`Digital Assistants (including Palm Pilots, pagers, and other PDAs), data from
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`mobile phones (including Blackberries and other mobile phones), and computer
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`code or instructions, correspondence, faxes, telegrams, cables, telexes, teletype
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`messages, memoranda, records, books, diaries, notebooks, calendars (paper,
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`electronic, and otherwise), telephone and other logs, telephone and other bills,
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`voicemail and transcriptions thereof, recorded distributions, forecasts, statistical
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`statements, accounts, invoices, purchase orders, receipts, billing records, tapes,
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`expense vouchers, minutes, summaries and other records of meetings, conferences,
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`negotiations, conversations, investigations and interviews, sales brochures and
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`literature, advertisements, price lists, trade letters, press releases, stenographic,
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`handwritten and any other notes, projections, working papers, checks (front and
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`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
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`back), check stubs and receipts, models, surveys, devices, pictures, photographs,
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`films, computer records, data compilations, and voice and video recordings.
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`“Documents” shall not be limited in any way as to the form of storage (such as
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`paper, microfiche, magnetic tape, magnetic disk, CD-ROM, DVD, optical disk, or
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`other storage device). A draft or non-identical copy is a separate document within
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`the meaning of this term.
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`10. The term “All Documents” means any and all documents that
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`You can locate through a diligent search of all locations likely to contain
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`documents requested herein and through reasonable inquiry of all persons likely to
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`know of the existence of documents requested herein.
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`11. The terms “Thing” and “Things” are also used in a broad sense
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`and include any software, samples, packaging and any other tangible item or
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`physical object other than a document.
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`12. The term “Communication” shall refer to all written, oral,
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`telephonic or other inquiries, dialogues, discussions, conversations, interviews,
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`correspondence, consultations, negotiations, agreements, understandings, meetings,
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`letters, notes, telegrams, advertisements, press releases, computer mail, e-mail and
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`all other documents evidencing any verbal or nonverbal interaction between
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`persons and/or entities.
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`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
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`13.
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`“Including” means “including, without limitation,” “include”
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`means “include, without limitation,” and “includes” means “includes, without
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`limitation.”
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`14. The terms “relate to,” “relates to,” “related to,” “relating to,”
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`“referring to,” “regarding,” “concern,” and “concerning” mean constitute, include,
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`comprise, consist of, refer, reflect, discuss, show, state, explain, contradict, provide
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`context to, evidence, or be in any way logically or factually connected with the
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`matter discussed or identified.
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`15.
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`“Infringe” and any variant thereof refers to any form of patent
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`infringement actionable under United States law, including direct infringement,
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`contributory infringement, inducement to infringe, literal infringement, and
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`infringement under the doctrine of equivalents.
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`16.
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`“Identify,” when used in reference to a document or thing,
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`means to set forth: (a) a description of the document or thing and its subject matter;
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`(b) the date of creation or transmission; (c) the author, originator, creator, or
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`developer; (d) the addressees and recipients; and (e) the present custodian or
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`location of the document or thing. When used with reference to a person,
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`“identify” means to set forth the person’s: (a) full name; (b) present or last known
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`address; (c) present or last known occupation and title; (d) present or last known
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`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
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`employer and business address; and (e) present or last known home and business
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`telephone numbers.
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`17. The terms “or” and “and” shall be read in the conjunctive and in
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`the disjunctive wherever they appear, and neither of these words shall be
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`interpreted to limit the scope of these Requests.
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`18. The term “any” or “each” should be understood to include and
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`encompass “all.”
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`19. The use of a verb in any tense shall be construed as including
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`the use of the verb in all other tenses.
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`20. The singular form of any word shall be deemed to include the
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`plural. The plural form of any word shall be deemed to include the singular.
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`21.
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`In answering the following Interrogatories, Petitioner and
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`Privies shall furnish all available information, including information in the
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`possession, custody, or control of any of responding party’s attorneys, directors,
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`officers, agents, employees, representatives, associates, investigators or division
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`affiliates, partnerships, parents or subsidiaries, and persons under Your control,
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`who have the best knowledge, not merely information known to You based on
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`Your own personal knowledge. If any interrogatory has subparts, you must answer
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`each part separately and in full.
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`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
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`22.
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`If you object to any part of any interrogatory, you must state the
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`precise nature of the objection and answer all parts not objected to. If any
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`information requested is claimed to be privileged, immune from discovery or
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`otherwise not discoverable, You shall provide all information falling within the
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`scope of the Interrogatory which is discoverable.
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`23. Where a claim of privilege is asserted in responding or
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`objecting to any discovery requested in interrogatories and information is not
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`provided on the basis of such assertion, the party asserting the privilege shall in the
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`response or objection identify the nature of the privilege (including work product)
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`which is being claimed and if the privilege is being asserted in connection with a
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`claim or defense governed by state law, set forth the state privilege rule being
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`invoked. When any privilege is claimed, the party asserting it shall indicate, as to
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`the information requested, whether (a) any documents exist, or (b) any oral
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`communications took place.
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`24. For each item of information to which a claim of privilege is
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`made, identify such document or communication with sufficient particularity for
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`purposes of a motion to compel, such identification to include at least the
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`following:
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`a) the basis on which the privilege is claimed;
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`b) the names and positions of the author of the document or
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`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
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`8
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`communication and all other persons participating
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`in
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`the
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`preparation of the document;
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`c) the name and position of each individual or other person to whom
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`the document or communication, or a copy thereof, was sent or
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`otherwise disclosed;
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`d) the date of the document or communication;
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`e) a description of any accompanying material transmitted with or
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`attached to such document or communication;
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`f) the number of pages in such document or communication;
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`g) the particular
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`Interrogatory
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`to which such document or
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`communication is responsive; and
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`h) whether any business or non-legal matter is contained or discussed
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`in such document or communication.
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`25.
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`If Your response to a particular Interrogatory is a statement that
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`You lack the ability to comply with that Interrogatory, You must specify whether
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`the inability to comply is because the particular item or category of information
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`never existed, has been destroyed, has been lost, misplaced, or stolen, or has never
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`been, or is no longer, in Your possession, custody, or control, in which case the
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`name and address of any person or entity known or believed by You to have
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`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
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`9
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`possession, custody, or control of that information or category of information must
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`be identified.
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`26.
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`In the event that any document or thing called for by these
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`Interrogatories has been destroyed or discarded, please identify the document or
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`thing by specifying: (a) its author, originator, creator, or developer; (b) its subject
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`matter, date of creation or transmission, number of pages, attachments, and
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`appendices; (c) all custodians and recipients, including blind copy recipients, or
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`other individuals to whom the document or thing was distributed, shown, or
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`explained; (d) the date of destruction or discard, manner of destruction or discard,
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`and reasons for destruction, discard, or unavailability; (e) the persons who were
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`authorized to carry out such destruction or discard; and (f) whether any copies of
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`the document or thing, including backup copies or latent or “unswiped” images,
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`currently exist or are suspected to exist and, if so, the location and name of the
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`custodian of each copy.
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`27. Your obligation
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`to respond
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`to
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`these Interrogatories
`
`is
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`continuing and responses are to be supplemented to include subsequently acquired
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`information in accordance with the requirements of Rule 26(e) of the Federal Rules
`
`of Civil Procedure and the Patent Board’s Scheduling Order.
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`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
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`10
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`
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`INTERROGATORIES
`
`INTERROGATORY No. 1.
`
`
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`State, in detail, the factual bases for Your contention at page 13 of the
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`Request that the Awada ’596 reference qualifies as prior art under 35 U.S.C. §
`
`102(e) and Identify the persons most knowledgeable about any such facts.
`
`ANSWER:
`
`INTERROGATORY No. 2.
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`
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`Identify and describe, in detail, each patent application, invention
`
`disclosure, or product description generated by or on behalf of any Garmin entity
`
`that describes a “vehicle speedometer with speed limit alert” as You described in
`
`the Petition at page 13.
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`ANSWER:
`
`INTERROGATORY No. 3.
`
`
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`Describe the circumstances of Your first introducing the speed limit
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`alert feature on Garmin products including, without limitation, the dates of all
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`events, the reason such feature was implemented, the Identity of documents
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`describing Your efforts to develop the feature, the value of the feature to
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`customers, and the Identity of persons involved in the decision to develop the
`
`feature and include it in Your products.
`
`ANSWER:
`
`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
`
`
`
`11
`
`
`
`INTERROGATORY No. 4.
`
`
`
`State in detail the factual bases for Your contention at pages 11-12 of
`
`the Request that the Aumeyer ’811 reference qualifies as prior art under 35 U.S.C.
`
`§ 102(e) and Identify the persons most knowledgeable about any such facts.
`
`ANSWER:
`
`INTERROGATORY No. 5.
`
`
`
`State Your understanding of the ordinary meaning of the term
`
`“colored display” and Identify any documents you contend support your
`
`understanding and any documents you considered and determined not to support
`
`your understanding.
`
`ANSWER:
`
`INTERROGATORY No. 6.
`
`
`
`State Your understanding of the ordinary meaning of the term
`
`“delineate which speed readings are in violation of the speed limit” and Identify
`
`any documents you contend support your understanding and any documents you
`
`considered and determined not to support your understanding.
`
`ANSWER:
`
`INTERROGATORY No. 7.
`
`
`
`State Your understanding of the ordinary meaning of the term
`
`“integrally attached to said colored display” and Identify any documents you
`
`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
`
`
`
`12
`
`
`
`contend support your understanding and any documents you considered and
`
`determined not to support your understanding.
`
`ANSWER:
`
`INTERROGATORY No. 8.
`
`
`
`If You contend that manually adjusting a speed limit indicator
`
`satisfies any claim element of the ’074 Patent, identify each claim element and
`
`state the factual bases, if any, for your contention.
`
`ANSWER:
`
`INTERROGATORY No. 9.
`
`
`
`By calendar quarter since 2005 (or other period used by Garmin to
`
`maintain records in the ordinary course of business) Identify, by Garmin product
`
`number, product type, model name/number, retail price, description, and any other
`
`designation used by Garmin, each Accused Product and state the quantity of such
`
`product made, imported, and sold and the name, designation, or other identifier
`
`used by Garmin for each Accused Product.
`
` Identify the persons most
`
`knowledgeable about this information.
`
`ANSWER:
`
`You may provide your response in tabular format in substantially the
`
`form provided here as an example:
`
`Garmin
`Product
`
`Internal
`designation
`
`Model No.
`
`Time
`Period
`
`Quantity
`Sold
`
`MSRP
`
`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
`
`
`
`Description
`
`Actual
`Sales Price
`(Average)
`
`13
`
`
`
`condor
`
`3790
`
`Q1 2012
`
`14,123
`
`$399
`
`$379
`
`PND with
`Speed Alert
`
`2012
`NUVI
`3790T
`
`
`INTERROGATORY No. 10.
`
`Identify the parties to any agreements (e.g., license agreements,
`
`technology agreements, co-development agreements, or settlements) between You
`
`and any other Person concerning the speed limit alert feature and associated
`
`product software, hardware, firmware or other component that is accused of
`
`infringement in the district court cases. Identify, in Your response, the persons
`
`most knowledgeable about these relationships, the agreements, and Identify the
`
`agreements and associated documents.
`
`ANSWER:
`
`INTERROGATORY No. 11.
`
`Describe completely Your relationship with each Privy, reseller,
`
`distributor, OEM, and wholesale customer (including without limitation Chrysler
`
`and JVC Kenwood) with respect to the Accused Products including without
`
`limitation the nature and content of any: (1) indemnification agreement; (2) joint
`
`development agreement; (3) agreement to share technology, know-how, software,
`
`trade secrets, intellectual property, software, firmware, and the like; and (4)
`
`communication involving You and such party.
`
`ANSWER:
`
`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
`
`
`
`14
`
`
`
`INTERROGATORY No. 12.
`
`What do you contend is the level of one of ordinary skill in the art that
`
`should be applied? State the reasons, bases, and Identify any documents you
`
`contend support your position.
`
`ANSWER:
`
`INTERROGATORY No. 13.
`
`If You contend the speed limit alert/warning feature of the Accused
`
`Products was NOT commercially successful, state the complete factual bases for
`
`Your contention and Identify any Documents or Things that You contend support
`
`such contention.
`
`ANSWER:
`
`INTERROGATORY No. 14.
`
`When did You first commercially introduce the speed alert/warning
`
`feature?
`
`ANSWER:
`
`INTERROGATORY No. 15.
`
`What development, design, and testing efforts did You undertake in
`
`connection with commercialization of the speed limit warning feature?
`
`ANSWER:
`
`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
`
`
`
`15
`
`
`
`INTERROGATORY No. 16.
`
`Why did You commercially introduce the speed limit warning
`
`feature? Include in your response any efforts You undertook to analyze, evaluate,
`
`and quantify the market need or demand for the feature, and Garmin competitor
`
`products which utilized the feature.
`
`ANSWER:
`
`INTERROGATORY No. 17.
`
`Identify, by name, all Persons, including, but not limited to, Privies,
`
`that are or were involved, in whole or in part, in (i) the decision to request that the
`
`Patent Trial and Appeal Board initiate an inter partes review of the ‘074 patent;
`
`and/or (ii) providing payment for any legal fees, costs or expenses incurred in
`
`connection with the inter partes review of the ‘074. Identify all Documents and
`
`Communications relating to (i) and (ii).
`
`ANSWER:
`
`INTERROGATORY No. 18.
`
`Identify all Documents and Communications related to (i) Giuseppe
`
`Cuozzo and/or (ii) the ‘074 patent, including, but not limited to U.S. Patent No.
`
`8,258,978.
`
`ANSWER:
`
`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
`
`
`
`16
`
`
`
`INTERROGATORY No. 19.
`
`Identify all Documents and Communications related to the subject
`
`matter of U.S. Patent No. 8,258,978 (“the ‘978 patent”) including all Garmin
`
`products which include or utilize the subject matter, all license agreements which
`
`refer to the ‘978 patent, and the value Garmin ascribes to the ‘978 patent.
`
`ANSWER:
`
`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
`
`
`
`17
`
`
`
`
`
`
`
`By: /s/ John Robert Kasha
`John Robert Kasha
`KASHA LAW LLC
`14532 Dufief Mill Road
`North Potomac, MD 20878
`Tel: (703) 867-1886
`Fax: (301) 340-3022
`john.kasha@kashalaw.com
`
`
`John Robert Kasha, Esq.
`KASHA LAW LLC
`14532 Dufief Mill Road
`North Potomac, MD 20878
`Tel: (703) 867-1886
`Fax: (301) 340-3022
`john.kasha@kashalaw.com
`
`Cabrach J. Connor
`Jason W. Deats
`REED & SCARDINO LLP
`301 Congress Avenue, Suite 1250
`Austin, TX 78701
`Tel: (512) 474-2449
`Fax: (512) 474-2622
`cconnor@reedscardino.com
`jdeats@reedscardino.com
`
`David A. Skeels
`FRIEDMAN, SUDER & COOKE
`604 E. 4th Street, Suite 200
`Fort Worth, TX 76102
`Tel: (817) 334-0400
`Fax: (817) 334-0401
`skeels@fsclaw.com
`blumenfeld@fsclaw.com
`gunter@fsclaw.com
`
`
`
`February 12, 2012
`
`ATTORNEYS FOR PATENT OWNER CUOZZO SPEED TECHNOLOGIES LLC
`
`
`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
`
`
`
`18
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 12th day of February, 2013, a true and correct
`
`copy of Patent Owner Cuozzo Speed Technologies LLC First Set of Interrogatories
`
`to Garmin (Nos. 1-19) has been provided, via electronic mail to counsel of record
`
`as follows:
`
`Jennifer Bailey
`jbailey@hoveywilliams.com
`
`Scott Brown
`srb@hoveywilliams.com
`
`Justin Crawford
`jcrawford@hoveywilliams.com
`
`/s/ John Robert Kasha
`John Robert Kasha
`
`
`
`CST’S FIRST SET OF INTERROGATORIES TO GARMIN
`
`
`
`19
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
`
`
`
`v.
`
`
`
`Patent of CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
`
`____________
`
`
`
`Case IPR2012-00001
`Patent 6,778,074
`
`____________
`
`
`
`
`
`PATENT OWNER’S FIRST SET OF REQUESTS FOR PRODUCTION TO
`PETITIONER
`
`Patent Owner Cuozzo Speed Technologies LLC (“CST”) requests
`
`Petitioners respond and produce the following documents and things pursuant to
`
`Federal Rule of Civil Procedure 26(a) and the Patent Board’s Scheduling Order.
`
`CST’S FIRST SET OF REQUESTS FOR PRODUCTION TO GARMIN
`
`1
`
`
`
`I.
`
`INSTRUCTIONS
`
`In responding and producing documents and things responsive to these
`
`Requests, you shall comply with the Board’s Scheduling Order and the limitations
`
`on discovery set forth in the Federal Rules of Civil Procedure and the following
`
`instructions:
`
`1.
`
`These requests are continuous in nature, and pursuant to Federal Rule
`
`of Civil Procedure 26(e), the responding party is under a duty to timely amend
`
`each prior response to a request for production if the responding party learns that
`
`the response is incomplete or incorrect in some material respect, or if any
`
`information or documents are hereafter identified, located or acquired.
`
`2.
`
`These instructions and definitions should be construed to require
`
`responses based upon the information available to the responding party as well as
`
`your attorneys, representatives, investigators, and others acting on your behalf or
`
`under your control.
`
`3.
`
`In producing documents and things, you are to produce the original of
`
`each document or thing requested together with all non-identical copies and drafts
`
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