`571-272-7822
`
`
` Paper No. 12
`Entered: March 3, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`UNIVERSAL REMOTE CONTROL, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`____________
`
`Cases IPR2014-01084 (Patent 7,126,468 B2)
`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`IPR2014-01106 (Patent 5,255,313)
`IPR2014-01109 (Patent 7,831,930 B2)
`IPR2014-01146 (Patent 8,243,207 B2) 1
`____________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, WILLIAM A.
`CAPP, and LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`ORDER
`Authorizing Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading.
`
`
`
`IPR2014-01106 (Patent 5,255,313)
`
`IPR2014-01109 (Patent 7,831,930 B2)
` IPR2015-01146 (Patent 8,243,207 B2)
`
`
`
`IPR2014-01084 (Patent 7,126,468)
`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`
`
`On March 2, 2015, a conference call was held involving counsel for the
`
`respective parties and Judges Blankenship, Medley, Capp, and Pettigrew. The
`purpose of the call was for Patent Owner to request authorization to file a motion
`for additional discovery. In particular, Patent Owner believes that Ohsung
`Electronics, a manufacturer of Petitioner’s products, is a real party-in-interest for
`Petitioner, and seeks additional discovery from Petitioner in support of that belief.
`Based on the facts presented during the conference call, the Board
`authorized Patent Owner to file a single motion for discovery to be filed in each
`proceeding. As explained, the parties may agree to additional discovery between
`themselves. 37 C.F.R. § 42.51(b)(2). The parties are encouraged to work together
`to come to any agreement regarding the discovery Patent Owner seeks prior to
`Patent Owner filing its motion for additional discovery. The motion should
`include only those items for which the parties could not agree.
`During the call, the Board also explained that a party moving for additional
`discovery “must show that such additional discovery is in the interests of justice.”
`See 35 U.S.C. § 316(a)(5); 37 C.F.R. § 42.51(b)(2). The factors set forth in
`Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001 (PTAB
`March 13, 2013) (Paper 26) are important factors in determining whether a
`discovery request meets the statutory and regulatory necessary “in the interest of
`justice” standard. Accordingly, Patent Owner’s motion should explain with
`specificity the discovery requested and why such discovery is necessary “in the
`interest of justice” using those factors. In that regard, Patent Owner should not
`
`2
`
`
`
`IPR2014-01106 (Patent 5,255,313)
`
`IPR2014-01084 (Patent 7,126,468)
`IPR2014-01109 (Patent 7,831,930 B2)
`IPR2014-01102 (Patent 5,228,077)
` IPR2015-01146 (Patent 8,243,207 B2)
`IPR2014-01103 (Patent 5,552,917)
`
`IPR2014-01104 (Patent 5,414,761)
`
`
`expect the Board to attempt to sort through a list of items to ascertain which items
`may meet the necessary in the interest of justice standard. Patent Owner bears the
`burden to demonstrate that the additional discovery (e.g., each requested item)
`should be granted. See 37 C.F.R. § 42.20(c).
`
`
`Order
`
`It is
`ORDERED that Patent Owner is authorized to file a motion for additional
`discovery under 37 C.F.R. § 42.51(b)(2) by March 5, 2015, limited to 10 pages as
`specified in this order;
`FURTHER ORDERED that Petitioner is not authorized to file an opposition
`until further notice from the Board.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2014-01106 (Patent 5,255,313)
`
`IPR2014-01109 (Patent 7,831,930 B2)
` IPR2015-01146 (Patent 8,243,207 B2)
`
`
`
`IPR2014-01084 (Patent 7,126,468)
`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`
`FOR PETITIONER:
`Douglas Miro
`dmiro@ostrolenk.com
`
`Peter Kang
`pkang@sidley.com
`Theodore Chandler
`tchandler@sidley.com
`
`Ferenc Pazmandi
`fpazmandi@sidley.com
`
`Keith Barkaus
`kbarkaus@ostrolenk.com
`
`FOR PATENT OWNER:
`
`Eric Maiers
`maierse@gtlaw.com
`
`Michael Nicodema
`nicodemam@gtlaw.com
`
`James Lukas
`lukasj@gtlaw.com
`
`Robbie Harmer
`harmerr@gtlaw.com
`
`4
`
`
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