Trials@uspto.gov
`571-272-7822
`
` Paper No. 15
`
`Entered: March 17 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.
`
`DECISION
`
`
`
`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.
`
`
`
`571-272-7822
`
` Paper No. 15
`
`Entered: March 17 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.
`
`DECISION
`
`
`
`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.
`
`
`
`
`IPR2014-01084 (Patent 7,126,468)
`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`
`
`
`
`
`
`
`Denying Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`IPR2014-01106 (Patent 5,255,313)
`IPR2014-01109 (Patent 7,831,930)
`IPR2015-01146 (Patent 8,243,207)
`
`I. INTRODUCTION
`
`
`
`Universal Electronics, Inc. (“UEI” or “Patent Owner”) filed a Motion for
`
`Additional Discovery in each proceeding relating to whether Universal Remote
`
`Control, Inc. (“URC” or “Petitioner”) properly named all real parties-in-interest.
`
`Paper 122 (“Mot.” or “Motion”).
`
`Patent Owner contends that Petitioner failed to name Ohsung Electronics
`
`Co., Ltd., and/or Ohsung Electronics U.S.A., Inc. (“Ohsung”) as real parties-in-
`
`interest. Id. at 1. Patent Owner submits three production requests and three
`
`interrogatory requests as follows (id. at 8, 10):
`
`Production Request No. 1: Documents and things regarding any
`money or consideration paid or to be paid by Ohsung to URC or
`URC’s legal counsel for the Petition of this Proceeding, and
`agreements regarding any such money or consideration paid or to be
`paid by Ohsung to URC or URC’s legal counsel for the Petition or
`this Proceeding.
`
`Production Request No. 2: Documents and things regarding any
`money or consideration paid or to be paid by Ohsung to URC or
`URC’s legal counsel for Universal Electronics Inc. v. Universal
`Remote Control, Inc., Ohsung Electronics Co., Ltd., and Ohsung
`Electronics U.S.A. Inc., Case No. SACV 13-00984 AG (JPRx) (C.D.
`Cal.) (the “Litigation”), and agreements regarding any such money or
`consideration paid or to be paid by Ohsung to URC or URC’s legal
`counsel for the Litigation.
`
`
`
`2 Citations are to IPR2014-01103.
`
`2
`
`
`
`IPR2014-01106 (Patent 5,255,313)
`IPR2014-01109 (Patent 7,831,930)
`IPR2015-01146 (Patent 8,243,207)
`
`IPR2014-01084 (Patent 7,126,468)
`IPR2014-01102 (Patent 5,228,077)
`IPR2014-01103 (Patent 5,552,917)
`IPR2014-01104 (Patent 5,414,761)
`
`
`
`
`
`
`
`Production Request No. 3: Documents and things regarding Mr. Jak
`You’s, or any other person’s, dual-status as an employee of URC and
`Ohsung.
`
`Interrogatory No. 1: Identify any money or consideration paid or to
`be paid by Ohsung to URC or URC’s legal counsel for the Petition or
`this Proceeding, by the payment date and the amount paid.
`
`Interrogatory No. 2: Identify any money or consideration paid or to
`be paid by Ohsung to URC or URC’s legal counsel for the Litigation,
`by the payment date and the amount paid.
`
`Interrogatory No. 3: Identify any person who has been an employee
`of both URC and Ohsung, concurrently or separately, and for each
`identified person, please also provide the company name, title, job
`function, and time period for each position held for each such
`employee.
`
`For the reasons that follow, we deny Patent Owner’s Motions.
`
`II. ANALYSIS
`
`Discovery is available for the 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 37 C.F.R. § 42.51(b)(2)(“The moving party must show
`
`that such additional discovery is in the interest of justice . . . .”). Clear from the
`
`legislative history is that discovery should be limited, and that the PTO should be
`
`conservative in its grant of additional discovery in order to meet time imposed
`
`deadlines. 154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen.
`
`Kyl).
`
`As explained in the order (Paper 11) authorizing Patent Owner’s motion for
`
`3
`
`
`
`
`IPR2014-01084 (Patent 7,126,468)
`
`IPR2014-01102 (Patent 5,228,077)
`
`IPR2014-01103 (Patent 5,552,917)
`
`IPR2014-01104 (Patent 5,414,761)
`
`
`additional discovery, the factors set forth in Garmin International, Inc. v. Cuozzo
`
`IPR2014-01106 (Patent 5,255,313)
`IPR2014-01109 (Patent 7,831,930)
`IPR2015-01146 (Patent 8,243,207)
`
`Speed Technologies. LLC, Case IPR2012-00001 (PTAB Mar. 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. Patent
`
`Owner argues that each discovery request complies with the Garmin factors.
`
`Mot. 7.
`
`Production Requests and Interrogatories 1 and 2
`
`Patent Owner argues that Garmin factor 13 is met because Patent Owner
`
`possesses evidence and reasoning tending to show beyond speculation that
`
`something useful will be uncovered in response to production requests and
`
`interrogatories 1 and 2. Id. at 8–9. Patent Owner contends that the evidence
`
`presented tends to show that there is a relationship between Ohsung and Petitioner
`
`that goes beyond an ordinary co-defendant or supplier relationship. That
`
`contention is based on Petitioner and Ohsung having shared an employee (Mr. Jak
`
`You), office space, and legal counsel. Id. at 8–9.
`
`The discovery Patent Owner seeks from Petitioner relates to whether
`
`Ohsung is a real party-in-interest to the proceedings.4 Whether a non-identified
`
`
`
`3 In essence, for Garmin factor 1, the requestor of information already should be in
`possession of a threshold amount of evidence or reasoning tending to show beyond
`speculation that something useful will be uncovered. Garmin at 7.
`
` 4
`
` Section 312(a) of Title 35 of the United States Code provides that a petition for
`inter partes review under 35 U.S.C. § 311 may be considered only if, among other
`things, the petition identifies all real parties-in-interest. 35 U.S.C. § 312(a)(2).
`4
`
`
`
`
`IPR2014-01084 (Patent 7,126,468)
`
`IPR2014-01102 (Patent 5,228,077)
`
`IPR2014-01103 (Patent 5,552,917)
`
`IPR2014-01104 (Patent 5,414,761)
`
`
`party is a real party-in-interest to a proceeding is a highly fact-dependent question.
`
`IPR2014-01106 (Patent 5,255,313)
`IPR2014-01109 (Patent 7,831,930)
`IPR2015-01146 (Patent 8,243,207)
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012)
`
`(“Trial Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)). “A
`
`common consideration is whether the non-party exercised or could have exercised
`
`control over a party’s participation in a proceeding.” Trial Practice Guide, 77 Fed.
`
`Reg. at 48,759 (citing Taylor, 553 U.S. at 895). The concept of control generally
`
`means that “it should be enough the nonparty has the actual measure of control or
`
`opportunity to control that might reasonably be expected between two formal
`
`coparties.” Id.
`
`We have reviewed the reasoning and evidence to which we are directed for
`
`Patent Owner’s showing beyond speculation that something useful will be
`
`uncovered in response to production requests and interrogatories 1 and 2, but we
`
`are not persuaded by such evidence and reasoning. Evidence that Mr. Jak You first
`
`worked for URC, then worked for Ohsung for demonstrating that URC and
`
`Ohsung share employees, dates back to August 8, 2001 (Ex. 2019), July 16, 2012
`
`(Ex. 2018), and July 2013 (Exhibit 2021). Such evidence does not tend to show
`
`that Mr. You currently holds himself out as working for both Ohsung and URC, or
`
`that Ohsung and URC currently “share employees.” We would want to know the
`
`relationship status currently between URC and Ohsung as far as sharing of
`
`employees goes. In any event, and even assuming that URC and Ohsung currently
`
`share an employee, we do not agree with Patent Owner that such a sharing of one
`
`employee (Mr. You) suggests that Ohsung has paid for anything associated with
`
`the proceedings before us. Mot. 9. Moreover, we are not persuaded by Patent
`
`5
`
`
`
`
`IPR2014-01084 (Patent 7,126,468)
`
`IPR2014-01102 (Patent 5,228,077)
`
`IPR2014-01103 (Patent 5,552,917)
`
`IPR2014-01104 (Patent 5,414,761)
`
`
`Owner’s argument that because URC previously paid for office space which an
`
`IPR2014-01106 (Patent 5,255,313)
`IPR2014-01109 (Patent 7,831,930)
`IPR2015-01146 (Patent 8,243,207)
`
`Ohsung employee (Mr. You) used, that suggests that Ohsung has reciprocated by
`
`paying for anything associated with the proceedings. Id. If anything, the evidence
`
`tends to show that URC pays for expenses, such as the costs associated with these
`
`proceedings, not Ohsung. Lastly, we are not persuaded by Patent Owner’s
`
`argument that because URC and Ohsung share litigation counsel in the related
`
`case, that that tends to show that Ohsung has paid for at least something in these
`
`proceedings. Id. In summary, none of Patent Owner’s evidence or reasoning tends
`
`to show beyond speculation that something useful will be uncovered in response to
`
`production requests and interrogatories 1 and 2.
`
`Production Request 3 and Interrogatory 3
`
`Patent Owner argues that Garmin factor 1 is met because Patent Owner
`
`possesses evidence and reasoning tending to show beyond speculation that
`
`something useful will be uncovered in response to production request 3 and
`
`interrogatory 3. Mot. 10. Patent Owner argues that because URC and Ohsung
`
`share Mr. You as an employee, that tends to show that there may be other
`
`employees with a dual-employment relationship and, hence, “the companies’ ties
`
`go much deeper than a supplier relationship.” Id.
`
`We already have explained why the submitted evidence does not tend to
`
`show that Mr. You currently holds himself out as working for both Ohsung and
`
`URC, such that Ohsung and URC currently share an employee. Even assuming
`
`that URC and Ohsung currently do share an employee (Mr. You), such sharing of
`
`an employee does not suggest that Ohsung exercised or could have exercised
`
`6
`
`
`
`
`IPR2014-01084 (Patent 7,126,468)
`
`IPR2014-01102 (Patent 5,228,077)
`
`IPR2014-01103 (Patent 5,552,917)
`
`IPR2014-01104 (Patent 5,414,761)
`
`
`control over URC as far as these proceedings are concerned. For instance, Mr.
`
`IPR2014-01106 (Patent 5,255,313)
`IPR2014-01109 (Patent 7,831,930)
`IPR2015-01146 (Patent 8,243,207)
`
`You is said to have been a director of engineering for URC. Id. at 3. Patent
`
`Owner has not shown that Mr. You currently is in a position within Ohsung to
`
`persuade Ohsung and/or URC to make a litigation decision to pursue an inter
`
`partes proceeding. In summary, none of Patent Owner’s evidence or reasoning
`
`tends to show beyond speculation that something useful will be uncovered in
`
`response to production request 3 and interrogatory 3.
`
`Other Garmin factors
`
`Patent Owner addresses the other factors set forth in Garmin to show that the
`
`additional discovery should be granted. Mot. 8–10. Even considering those
`
`factors in Patent Owner’s favor, for reasons provided above, Patent Owner has not
`
`met its burden to show that the additional discovery is necessary in the interest of
`
`justice.
`
`III. CONCLUSION
`
`For the reasons discussed above, we conclude that Patent Owner has not met
`
`its burden to show that the additional discovery is necessary in the interest of
`
`justice.
`
`It is
`
`IV. ORDER
`
`ORDERED that Patent Owner’s Motions for additional discovery are
`
`denied.
`
`
`
`7
`
`
`
`IPR2014-01084 (Patent 7,126,468)
`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)
`IPR2015-01146 (Patent 8,243,207)
`
`
`
`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
`
`8
`
`
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