Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 58
`Entered: January 31, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`ACHATES REFERENCE PUBLISHING, INC.
`Patent Owner
`____________
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)1
`
`
`Before HOWARD B. BLANKENSHIP, JUSTIN T. ARBES, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`1 This Order addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`Tel: 571-272-7822
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`
`
`Paper 58
`Entered: January 31, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`ACHATES REFERENCE PUBLISHING, INC.
`Patent Owner
`____________
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)1
`
`
`Before HOWARD B. BLANKENSHIP, JUSTIN T. ARBES, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`1 This Order addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`
`
`Introduction
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`Petitioner filed a motion for additional discovery in the instant
`
`proceedings and Patent Owner filed an opposition.2 For the reasons stated
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`below, Petitioner’s motion is granted.
`
`Patent Owner filed with its response in each proceeding a declaration
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`from Mr. Dmitry Radbel (Exhibit 2013) and a declaration from Dr. Xin
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`Wang (Exhibit 2014). In their declarations, Mr. Radbel and Dr. Wang stated
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`that they relied on the other individual’s declaration with respect to two prior
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`art references at issue in these proceedings: U.S. Patent No. 5,933,497
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`(“Beetcher”) and U.S. Patent No. 5,949,876 (“Ginter”). Mr. Radbel stated
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`that he “rel[ied] upon the descriptions regarding Beetcher given in the
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`declaration of Mr. Wang.” Ex. 2013 ¶ 93. Dr. Wang stated that he “relied
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`upon the descriptions of Ginter that Mr. Radbel set forth,” and also relied on
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`Mr. Radbel’s testimony regarding the “legal standards for validity,” level of
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`ordinary skill in the art, and “design approach” of a person of ordinary skill
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`in the art. Ex. 2014 ¶¶ 7-10, 51, 62.
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`Petitioner cross-examined both witnesses, and transcripts of their
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`depositions have been entered into the record. See Exs. 2031, 2032, 2034,
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`2035. According to Petitioner, Mr. Radbel and Dr. Wang testified during
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`their depositions that, in addition to the other individual’s declaration, they
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`also relied on email communications with the other individual as a basis for
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`their opinions. Mot. 1-3. Petitioner, therefore, seeks discovery of “email
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`communications exchanged directly between [Patent Owner’s] two experts
`
`
`2 IPR2013-00080, Papers 51 (“Mot.”), 57 (“Opp.”); IPR2013-00081, Papers
`45, 48. While the analysis herein applies to both proceedings, we refer to
`the papers filed in Case IPR2013-00080 for convenience.
`
`
`
`2
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`
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`during preparation of their declarations which concern any topic addressed
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`
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`in either witness’ declaration.” Id. at 1.
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`
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`Analysis
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`Pursuant to the Leahy-Smith America Invents Act, Pub. L. No.
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`112-29, 125 Stat. 284 (2011) (“AIA”), certain discovery is available in
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`inter partes review proceedings. 35 U.S.C. § 316(a)(5); see 37 C.F.R.
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`§§ 42.51-53. Discovery in an inter partes review proceeding, however, is
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`less than what is normally available in district court patent litigation, as
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`Congress intended inter partes review to be a quick and cost effective
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`alternative to litigation. See H. Rep. No. 112-98 at 45-48 (2011). A party
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`seeking discovery beyond what is expressly permitted by rule must do so by
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`motion, and must show that such additional discovery is “necessary in the
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`interest of justice.” 35 U.S.C. § 316(a)(5); see 37 C.F.R. § 42.51(b)(2)(i).
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`The legislative history of the AIA makes clear that additional discovery
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`should be confined to “particular limited situations, such as minor discovery
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`that PTO finds to be routinely useful, or to discovery that is justified by the
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`special circumstances of the case.” 154 Cong. Rec. S9988-89 (daily ed.
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`Sept. 27, 2008) (statement of Sen. Kyl). In light of this, and given the
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`statutory deadlines required by Congress for inter partes review
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`proceedings, the Board will be conservative in authorizing additional
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`discovery. See id.
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`The Board considers various factors in determining whether additional
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`discovery in an inter partes review proceeding is necessary in the interest of
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`justice, including the following:
`
`
`
`3
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`
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
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`
`
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`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.
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`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at
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`6-7 (Mar. 5, 2013). “Useful” in the context of this factor means “favorable
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`in substantive value to a contention of the party moving for discovery,” not
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`just “relevant” or “admissible.” Id. at 7.
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`Petitioner cites portions of the depositions of Mr. Radbel and
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`Dr. Wang where the witnesses testified that they had direct email
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`communications with each other regarding the prior art at issue in these
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`proceedings. Mot. 2-3. For example, Dr. Wang testified as follows
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`regarding his communications with Mr. Radbel, particularly with respect to
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`Ginter:
`
`Q. So the question was, did you speak directly to Mr. Radbel
`before you prepared your declaration?
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`A. Yes. We had a conversation.
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`Q. And was that by email or by a telephone call?
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`A. Email and telephone calls.
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`Q. And can you tell me what topics you discussed with Mr.
`Radbel?
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`A. The few things. One is which part we’re going to cover.
`And he has more knowledge than I do, Ginter, and so we kind
`of talk about given the time we have and how we’re going to
`divide the work. And so then we – and we have some
`references, mutual references, cross-references, and we talk
`about how do we deal with that.
`
`. . .
`
`
`
`4
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`
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
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`
`
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`Q. So what I wanted to know is whether you discussed in those
`emails the technical analysis you were performing of the prior
`art or the claims that you address in your report?
`
`A. Yeah, we had exchange on those.
`
`Q. So if I looked in those emails, I would see you and Mr.
`Radbel discussing what is being described, for example, in one
`of the patents that was prior art?
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`A. Basically that’s the nature of it.
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`Ex. 2034 at 21:1-22:21 (emphasis added). Mr. Radbel confirmed the
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`discussions regarding Ginter, and stated that the two individuals discussed
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`the challenged patents and used each other as “sounding boards”:
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`Q. . . . And what did you discuss with Dr. Wang?
`
`A. We discussed the patents, the issues. Sometimes he would
`use me as a sounding board; sometimes I would use him.
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`. . .
`
`Q. Okay. And yet you used Dr. Wang as a sounding board for
`some of your views on the Ginter ’876 patent; is that fair?
`
`A. Yeah. I guess.
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`Ex. 2031 at 17:18-18:5. Similarly, Mr. Radbel testified that he relied on Dr.
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`Wang’s communications regarding Beetcher:
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`Q. . . . Did you read Bee[t]cher?
`
`A. I did a quick review. Mr. – Dr. Wang focused on analyzing
`Bee[t]cher, so I relied in part on his statements.
`
`. . .
`
`Q. . . . Were there email statements he made to you that you
`relied on?
`
`A. With regard specifically to Bee[t]cher, I’m not sure.
`
`Q. How about for anything else?
`
`A. We had email exchanges, yeah.
`
`Q. You had email exchanges about Bee[t]cher?
`
`
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`5
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
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`
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`A. We had email exchanges because we were collaborating on
`that project.
`
`Q. And was part of that collaboration that you would talk to
`him about his analysis of Bee[t]cher?
`
`A. That was part of the collaboration, yes.
`
`Q. Okay. And Dr. Wang’s analysis of Bee[t]cher informed your
`– the analysis that’s in your report?
`
`A. Yes.
`
`Ex. 2032 at 329:11-330:10 (emphasis added). Finally, Dr. Wang confirmed
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`that at least some of the emails he exchanged with Mr. Radbel did not
`
`involve counsel for Patent Owner:
`
`Q. Okay. Now, did you send those communications directly to
`Mr. Radbel?
`
`A. I believe so.
`
`Q. So you didn’t send them to the lawyers and then ask the
`lawyers to send them to Mr. Radbel?
`
`A. No. I had direct conversation with him.
`
`Ex. 2034 at 22:22-23:2.
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`The deposition testimony of Mr. Radbel and Dr. Wang indicates that
`
`they exchanged emails regarding the challenged patents and prior art, and at
`
`least considered the statements in those emails (in addition to the other
`
`individual’s declaration) in forming their opinions regarding the alleged
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`patentability of the challenged claims over that prior art. This testimony
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`indicates more than a mere possibility or mere speculation that something
`
`useful will be uncovered by producing the emails. Petitioner’s request is
`
`otherwise proper as well, as it is narrowly tailored to a small number of
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`emails and would not be overly burdensome for Patent Owner to answer.
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`Patent Owner argues that there is no indication that the emails contain
`
`anything “useful” to Petitioner, the questions posed by Petitioner during the
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`
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`6
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
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`depositions were “inexact,” and the answers provided by the witnesses do
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`
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`not show that they relied on the emails. Opp. 1-4. Patent Owner’s
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`arguments are not persuasive. Determining the factual basis for a
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`declarant’s opinions is a proper inquiry during discovery, and permitting an
`
`opposing party to do so is important to ensure the party has a fair
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`opportunity to challenge those opinions. See, e.g., 37 C.F.R. § 42.51(b)(1)
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`(routine discovery permitted of “any exhibit cited in a paper or in testimony”
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`and “[c]ross examination of affidavit testimony”). The deposition testimony
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`cited above is sufficiently clear regarding the witnesses’ use of the email
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`conversations in forming their opinions. As just one example, Mr. Radbel
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`confirmed that he talked to Dr. Wang about Beetcher and “Dr. Wang’s
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`analysis of Bee[t]cher informed . . . the analysis” in Mr. Radbel’s
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`declaration. Ex. 2032 at 329:11-330:10. Petitioner’s discovery request is
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`based on plain statements in the record, not mere speculation.
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`Patent Owner’s other arguments in its opposition also are not
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`persuasive. Patent Owner argues that the Board, in its Order authorizing a
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`motion for additional discovery (Paper 49), encouraged the parties to
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`continue their discussions to see if an agreement could be reached, but
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`Petitioner did not do so in good faith. Opp. 2-4. Patent Owner contends that
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`Petitioner only emailed Patent Owner and never scheduled a call to discuss
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`the matter before filing its motion. Id. Notably, however, Patent Owner
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`does not argue that any compromise or agreement could have been
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`reached—only that further discussions over the telephone “would have
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`exposed the lack of a good-faith basis for [Petitioner’s] motion.” See id. at
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`4. Although the Board encouraged the parties to confer and attempt to reach
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`an agreement if possible (and continues to do so for other disputes that may
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`
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`7
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
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`arise in these proceedings), it does not appear that any agreement was
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`
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`possible, and Petitioner’s motion will not be denied on that basis.
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`Patent Owner also asserts that requiring the production of emails
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`between Mr. Radbel and Dr. Wang would violate the parties’ agreement
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`regarding expert discovery. Id. at 4-5. Patent Owner contends that the
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`parties agreed not to permit discovery regarding the “process” of producing
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`declarations, citing statements from Petitioner’s counsel during the
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`deposition of Petitioner’s declarant. Id. (citing Ex. 1045 at 65-66). Patent
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`Owner, however, has not provided a copy of any agreement between the
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`parties showing that the parties specifically agreed not to permit discovery of
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`emails between declarants. Indeed, during a conference call to discuss its
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`discovery request, Petitioner took the position that the parties’ agreement
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`was only not to “produce draft expert reports and . . . discovery of privileged
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`communications with the expert.” Ex. 2030 at 16:10-23. Absent any
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`evidence of the precise terms of the parties’ agreement, we cannot say that it
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`would preclude the additional discovery sought by Petitioner. Further, even
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`if Patent Owner is correct that the parties’ agreement extends to inquiries
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`into the “process” of drafting declarations, Patent Owner has not explained
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`sufficiently how materials specifically relied on by a declarant, such as
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`emails from another declarant, fall within that drafting “process.”
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`Finally, Patent Owner argues in a footnote that the email
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`communications sought by Petitioner are privileged and should not be
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`produced without an in camera review by the Board. Opp. 2 n.1. Patent
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`Owner, however, does not cite any case law or other authority showing that
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`to be the case. We also note that Petitioner’s request is only for emails “sent
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`by one witness to the other, . . . not communications with counsel.” Mot. 4.
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`8
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
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`
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`Petitioner has met its burden to demonstrate that the additional
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`discovery it seeks is necessary in the interest of justice. Patent Owner shall
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`serve copies of the requested email communications on Petitioner. If, after
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`receiving the email communications, Petitioner believes that additional
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`action is necessary, it may request a conference call with the Board.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Petitioner’s motion for additional discovery is
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`granted; and
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`FURTHER ORDERED that Patent Owner shall serve on Petitioner,
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`by February 6, 2014, copies of all email communications exchanged directly
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`between Mr. Radbel and Dr. Wang during the preparation of their
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`declarations concerning any topic addressed in either declaration.
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`9
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`
`
`PATENT OWNER:
`
`Brad D. Pedersen
`PATTERSON THUENTE PEDERSEN, P.A.
`prps@ptslaw.com
`
`Jason Paul DeMont
`KAPLAN BREYER SCHWARTZ & OTTESEN
`jpdemont@kbsolaw.com
`
`
`
`
`
`10
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