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`Trials@uspto.gov
`571-282-7822
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`Paper No.________
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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)
`______________
`
`
`Before THOMAS L. GIANNETTI, Lead Administrative Patent Judge,
`HOWARD B. BLANKENSHIP, and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`MOTION BY PATENT OWNER
`For Additional Discovery
`37 C.F.R. § 42.51(b)
`
`
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`
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`TABLE OF CONTENTS
`
`Table of Authorities .................................................................................................... i
`List of Exhibits .......................................................................................................... ii
`
`I. Discovery Request Is Relevant to Whether Petitioner and Co-Defendants are
`Privies and the Petition is Barred by 35 U.S.C. § 315(b) .................................... 2
`
`
`II. Discovery Request Complies With the Interest of Justice Standard ................... 4
`
`III. Conclusion ........................................................................................................ 5
`Certificate of Service ................................................................................................. 7
`
`Attachment A - Document Production Request
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Automobile Ins. Co. of Hartford, Conn. v. Union Oil Co. of Calif.,
` 85 CA2d 302, 193 P2d 48 (1948). .......................................................................... 3
`
`Taylor v. Sturgell, 553 U.S. 880 (2008). .............................................................. 2, 3
`
`
`Rules & Regulations
`
`Federal Practice & Procedure §§ 4449, 4451 (2d ed. 2011). .................................. 2
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48759. ................................... 2, 3
`
`California Practice Guide, 2:28 (2012). ................................................................... 4
`
`
`
`
`
`i
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`
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`LIST OF EXHIBITS
`
`
`
`Exhibit 1037
`
`Amended Complaint from 2:11-cv-00294-JRG-RSP [176]
`
`Exhibit 1042
`
`District Court’s Proposed Constructions (Dec. 4, 2012)
`
`Exhibit 2001
`
`Original Complaint from 2:11-cv-00294-JRG-RSP [1]
`
`Exhibit 2002
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`Declaration of Jillian Centanni (outlining service dates of the
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`Complaint as the Certificates of Service were filed under seal
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`and unavailable to the public)
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`Exhibit 2003
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`Subpoena dated March 22, 2012 directed to Apple
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`Exhibit 2004
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`Petitioner refused to comply with the subpoena
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`Exhibit 2005
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`Second Amended Docket Control Order [286]
`
`Exhibit 2006
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`Apple SDK Agreement
`
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`
`
`ii
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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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`As authorized, Patent Owner moves for additional discovery under 37
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`C.F.R. § 42.51(b) seeking production by Petitioner of certain agreements between
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`Petitioner and any of its co-defendants in the related litigation, Achates Reference
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`Publishing, Inc. v. Symantec Corp. et al., E.D. Tex. Case No. 2:11-cv-00294-JRG-
`
`RSP (the “Texas litigation”), which are responsive to the attached Document
`
`Production Request. In the event this motion is granted, Patent Owner further
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`requests authorization to file a supplemental Preliminary Response to include
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`analysis of the documents produced within five days of their production.
`
`U.S. Patent No. 6,173,403 (“the ‘403 Patent”) and U.S. Patent No. 5,982,889
`
`(“the ‘889 Patent”) share an almost identical specification and have patent claims
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`directed to methods of distributing information products in a manner that allows
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`the publisher to control which products are installed on an end-user’s computer. On
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`June 20, 2011, Patent Owner filed a complaint that initiated the Texas litigation
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`against eleven original defendants, asserting patent infringement of both the ‘403
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`Patent and the ‘889 Patent. Ex. 2001. The original defendants were all formally
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`served by no later than July 14, 2011. Ex. 2002.
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`In May 2012, after discovery from one of the defendants, QuickOffice,
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`Patent Owner served a third party subpoena seeking discovery from Petitioner
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`related to an allegedly infringing “app” being offered by QuickOffice through the
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`Apple App Store. Ex. 2003. Petitioner refused to comply with the subpoena, Ex.
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`1
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
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`2004, and was subsequently added as a defendant in the Texas litigation by an
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`amended complaint filed and served on June 20, 2012. Ex. 1037.
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`Fact discovery closes March 18, 2013, a Markman Order has issued, Ex.
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`1042, and the Texas litigation is scheduled for jury selection on August 5, 2013
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`against Petitioner and the remaining co-defendants. Ex. 2005.
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`I.
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`
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`Discovery Request Is Relevant to Whether Petitioner and Co-
`Defendants are Privies and the Petition is Barred by 35 U.S.C. § 315(b)
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`Because the co-defendants were formally served more than one year before
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`the filing date of the Petition, the Board must consider evidence relevant to
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`whether these co-defendants are real parties-in-interest or in privy with Petitioner
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`when evaluating the one year limitation of 35 U.S.C. § 315(b) and the
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`identification requirement of 35 U.S.C. § 312(a)(2). Evidence relevant to this
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`analysis is broader than just an inquiry into whether there are any agreements
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`related to the control and funding of this inter partes review proceeding.
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`“Whether a party who is not a named participant in a given proceeding
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`nonetheless constitutes a ‘real party-in-interest’ or ‘privy’ to that proceeding is a
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`highly fact-dependent question. See generally Taylor v. Sturgell, 553 U.S.880
`
`(2008); 18A Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal
`
`Practice & Procedure §§ 4449, 4451 (2d ed. 2011).” Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48759. “Ultimately, that analysis seeks to determine whether
`
`
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`2
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
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`the relationship between the purported ‘privy’ and the relevant other party is
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`sufficiently close such that both should be bound by the trial outcome and related
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`estoppels. This approach is consistent with the legislative history of the AIA,
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`which indicates that Congress included ‘privies’ within the parties subject to the
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`statutory estoppel provisions in an effort to capture ‘the doctrine’s practical and
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`equitable nature,’ in a manner akin to collateral estoppel.” Id.
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`The analysis of privy and real party-in-interest in this case falls under the
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`second category of relationships to be considered as identified by the Supreme
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`Court in Taylor in which “nonparty preclusion may be justified based on a variety
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`of pre-existing ‘substantive legal relationship[s]’ between the person to be bound
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`and a party to the judgment.” Taylor v. Sturgell, 553 U.S. 880, 894 (2008).
`
`Under California law where Petitioner has its principal place of business, a
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`claim based on subrogation or indemnification is one of the kinds of “substantive
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`legal relationships” that can rise to the level of a real party-in-interest. “A person
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`obligated to pay for a loss caused by another may, by virtue of his or her payment,
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`become subrogated to whatever claim the payee has against the person causing the
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`loss. … In effect, there is an assignment by operation of law of the payee’s claims.
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`And, as with assignments generally, the subrogee (assignee) is thereafter the real
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`party in interest with respect to the claim. [See Automobile Ins. Co. of Hartford,
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`
`
`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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`Conn. v. Union Oil Co. of Calif. (1948) 85 CA2d 302, 304-305, 193 P2d 48, 49-
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`50.]” California Practice Guide, 2:28 (2012).
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`Limited discovery of the existence and details of any agreements related to
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`rights, obligations or indemnification for allegations of infringement of third party
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`intellectual property rights, and any joint defense agreements among Petitioner and
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`any of the remaining co-defendants will be relevant to determining the privy issue.
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`II. Discovery Request Complies With the Interest of Justice Standard
`
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`The statutory standard for whether additional discovery should be granted
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`under 37 C.F.R. § 42.51(b) is whether it is “necessary in the interest of justice.”
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`Here, multiple factors weigh in favor of allowing further discovery.
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`In this case, there is more than a mere possibility of discovering relevant
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`evidence. A publicly available version of a Software Developer Kit (SDK)
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`agreement between Petitioner and its App Developers exists, Ex. 2006. This SDK
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`agreement contains a provision for indemnification of Petitioner by an App
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`Developer, like QuickOffice, for any third party allegations of infringement of
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`intellectual property rights. Ex. 2006, p. 7 ¶ 6.
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`Moreover, Patent Owner cannot obtain access to this information by other
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`means. While Petitioner may have produced some responsive documents in the
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`Texas litigation, that discovery is under a court protective order and fact discovery
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`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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`is now closed such that Patent Owner cannot seek additional discovery in that
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`forum.
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`The attached Document Production Request seeking additional discovery
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`under 37 C.F.R. § 42.51(b) contains easily understood instructions, is responsibly
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`tailored to genuine issues and is not overly burdensome.
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`This request is being raised now because Patent Owner only recently
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`retained counsel and determined that a waiver of filing the Preliminary Response
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`was not in Patent Owner’s best interest given the uncertainty as to whether
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`responses to the proposed statements of fact in the Petition were necessary.
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`III. Conclusion
`
`
`The additional discovery sought by this motion is relevant to the issue of
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`privity which, if established, would prevent the Board from considering the
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`Petition and instituting a trial in the inter partes review. Given that the Petitioner
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`is raising the same arguments of invalidity of the ‘403 Patent and the ‘889 Patent in
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`the Texas litigation that goes to trial less than two months after the Board’s
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`deadline for determining whether to institute a trial, there will be no significant
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`prejudice to Petitioner if the Board finds that Petitioner and its co-defendants are in
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`privity due to a substantive legal relationship among them that may exist by virtue
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`of any joint representation and indemnification agreements that are the subject of
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`this additional discovery request.
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`
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`5
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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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`Dated: March 15, 2013
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`Respectfully submitted,
`
`
`
`
`
`/Brad Pedersen/
`
`Brad D. Pedersen (Reg. No. 32,432)
`Bradley J. Thorson (Reg. No. 52,288)
`Patterson Thuente Pedersen, P.A.
`80 South Eighth Street, Suite 4800
`Minneapolis, MN 55402
`Telephone: 612-349-5740
`Facsimile: 612-349-9266
`Email: pedersen@ptslaw.com
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` thorson@ptslaw.com
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` prps@ptslaw.com
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`Attorneys for Patent Owner
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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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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on March15,
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`
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`2013, a complete and entire copy of this submission, including Exhibits 2001-
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`2006, was served by Express Mail on Petitioner’s counsel Jeffrey P. Kushan and
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`Joseph A. Micallef, Sidley Austin LLP, 1501 K Street, N.W., Washington, D.C.
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`20005, as outlined by Petitioner’s Service Information in the December 14, 2012
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`Petition submission.
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`/Kristin Schmidt/
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`Kristin Schmidt
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`Patterson Thuente Pedersen, P.A.
`80 South Eighth Street, Suite 4800
`Minneapolis, MN 55402
`Telephone: (612) 349-5740
`
`7
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`Case IPR2013-00080 (Patent 6,173,403)
`Case IPR2013-00081 (Patent 5,982,889)
`
`
`Attachment A
`
`DOCUMENT PRODUCTION REQUEST
`
`
`INSTRUCTIONS:
`
`
`
`1.
`
`An entity’s full or abbreviated name refers to that entity and all
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`persons or legal entities under its control.
`
`
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`2.
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`“Defendant” means Electronic Arts, Inc., Symantec Corporation,
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`QuickOffice, Inc., SolarWinds, Inc., GlobalSCAPE, Inc., and/or Native
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`Instruments North America, Inc.
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`
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`3.
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`The “Texas Litigation” means the case styled Achates Reference
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`Publishing, Inc. v. Symantec Corp., et al., E.D. Tex Case No. 2:11-cv-00294-JRG-
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`RSP.
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`REQUESTS
`
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`1. Produce copies of any and all agreements related to rights, obligations or
`indemnification responsibilities for allegations of infringement of third party
`intellectual property rights among or between Petitioner and any Defendant
`in the Texas litigation relating to “apps” by these defendants that were made
`available on the Apple App Store between January 2010 and July 2011.
`
`2. Produce copies of any and all joint defense agreements related to the Texas
`litigation among Petitioner and any Defendant in the Texas Litigation.
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`
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`8
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`
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