Trials@uspto.gov
`571-272-7822
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`Paper 72
`Entered: February 14, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOPRO, INC.,
`Petitioner,
`
`v.
`
`CONTOUR IP HOLDING LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01078 (Patent 8,896,694 B2)
`Case IPR2015-01080 (Patent 8,890,954 B2)1
`____________
`
`
`
`Before JUSTIN T. ARBES, NEIL T. POWELL, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue a single Order to be filed in each case. Other
`than as expressly authorized herein, the parties are not authorized to use this
`style heading for any subsequent papers.
`
`

`

`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
`
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`The instant proceedings are on remand from the United States Court
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`of Appeals for the Federal Circuit. The panel issued a Final Written
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`Decision in each proceeding on October 26, 2016. In both decisions, the
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`panel determined that Petitioner had not established that a reference applied
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`in each of the asserted grounds of unpatentability, the GoPro Catalog
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`(Ex. 1011),2 is a prior art printed publication under 35 U.S.C. § 102(b), and
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`thus had not shown by a preponderance of the evidence that any of the
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`challenged claims are unpatentable. See Paper 54, 30. The Federal Circuit
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`subsequently vacated the decisions and remanded to the Board. GoPro, Inc.
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`v. Contour IP Holding LLC, 908 F.3d 690 (Fed. Cir. 2018); see Paper 68
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`(mandate issued on January 17, 2019). The Federal Circuit held that
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`“[Petitioner] met its burden to show that its catalog is a printed publication
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`under § 102(b),” and stated: “Because the Board refused to accept the GoPro
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`Catalog as a printed publication, it did not consider the merits of
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`[Petitioner’s] obviousness claims. On remand, the Board shall consider the
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`GoPro Catalog as prior art and evaluate the merits of [Petitioner’s]
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`unpatentability claims.” GoPro, 908 F.3d at 695–96 (citations omitted).
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`A conference call was held on February 4, 2019, among respective
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`counsel for Petitioner and Patent Owner, and Judges Arbes, Powell, and
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`McGraw.3 The purpose of the call was to discuss procedures following the
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`remand of the proceedings to the Board. The following issues were
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`discussed: (1) the scope of the trial in Case IPR2015-01080, (2) Patent
`
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`2 Most of the issues addressed herein apply to both proceedings. Unless
`otherwise specified, we refer to papers and exhibits in Case IPR2015-01078
`for convenience.
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`3 A court reporter, retained by Petitioner, was present on the call. Petitioner
`filed a transcript of the call as Exhibit 1040 in each proceeding.
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`
`
`2
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`

`

`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
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`Owner’s request for authorization to file the district court claim construction
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`decision in the related litigation between the parties, and (3) Patent Owner’s
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`request for authorization to file a motion for additional discovery.
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`
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`Scope of Trial in Case IPR2015-01080
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`In Case IPR2015-01080, Petitioner requested inter partes review of
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`claims 1–30 of U.S. Patent No. 8,890,954 B2 (“the ’954 patent”), and the
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`panel instituted a trial as to claims 1, 2, and 11–30 only. IPR2015-01080,
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`Paper 8 (“Dec. on Inst.”). The panel did not institute a trial on Petitioner’s
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`asserted grounds under 35 U.S.C. § 103(a) as to (1) claims 3–9 based on
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`Boland (Ex. 1010) and the GoPro Catalog, and (2) claim 10 based on
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`Boland, the GoPro Catalog, and Ueyama (Ex. 1013). See IPR2015-01080,
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`Paper 1, 26–27; Dec. on Inst. 6, 22–28. Subsequent to the Final Written
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`Decisions and while the instant proceedings were on appeal, the Supreme
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`Court of the United States held that a decision to institute under 35 U.S.C.
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`§ 314 may not institute on fewer than all claims challenged in the petition.
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`SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Given the initial
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`determination that Petitioner had demonstrated a reasonable likelihood of
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`prevailing as to claims 1, 2, and 11–30 of the ’954 patent, we modify the
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`Decision on Institution in Case IPR2015-01080 to institute on all claims and
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`all grounds asserted in the Petition, including (1) the challenge to claims 3–9
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`based on Boland and the GoPro Catalog and (2) the challenge to claim 10
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`based on Boland, the GoPro Catalog, and Ueyama.
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`Petitioner stated during the call that it did not seek any additional
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`briefing regarding claims 3–10 (or any other claims) and the parties agreed
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`that no additional briefing on the merits of Petitioner’s arguments in either
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`3
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`

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`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
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`proceeding is necessary. Following the call, the parties requested
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`authorization by email to file a joint motion to limit the Petition in
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`Case IPR2015-01080 to the originally instituted claims only. We authorize
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`the parties to do so. The joint motion must state that the parties agree to
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`withdraw jointly the newly instituted grounds as to claims 3–10 from
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`consideration.
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`
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`District Court Claim Construction Decision
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`Patent Owner stated during the call that while the instant proceedings
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`were on appeal, the district court in the related litigation between the parties,
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`Contour IP Holding, LLC v. GoPro, Inc., Case No. 17-cv-04738-WHO
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`(N.D. Cal.), rendered a decision on claim construction of the two challenged
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`patents. Patent Owner argued that certain aspects of the district court’s
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`decision are relevant to points raised during the briefing and by Petitioner
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`during oral argument in these proceedings, and Patent Owner requested
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`authorization to file the decision along with a short paper, limited to
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`350 words, explaining such relevance (similar to a citation of supplemental
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`authority under Federal Rule of Appellate Procedure 28(j)). Patent Owner
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`stated that the submission would not discuss the asserted prior art references
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`and proposed that Petitioner be authorized to file its own paper on the same
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`day.
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`Petitioner opposed Patent Owner’s request, arguing that the district
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`court construed terms not addressed by either party or their declarants in
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`these proceedings. According to Petitioner, Patent Owner had the
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`opportunity to raise those terms in its Responses in these proceedings but,
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`instead, agreed with the panel’s initial claim interpretations of certain terms
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`4
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`

`

`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
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`and stated that no other terms required interpretation. See, e.g., Paper 30
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`(Patent Owner’s Response), 17–18. Petitioner also argued that permitting
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`additional briefing on claim interpretation would be outside the scope of the
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`remand.
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`After further consideration, we are persuaded that the district court
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`claim construction decision should be made of record and that limited
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`briefing would be helpful. See 37 C.F.R. § 42.20(d). Although we apply the
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`broadest reasonable interpretation standard in these proceedings, we will
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`consider the district court’s decision. See 37 C.F.R. § 42.100(b) (2014);4
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`Knowles Elecs. LLC v. Iancu, 886 F.3d 1369, 1376 (Fed. Cir. 2018)
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`(“[I]n some circumstances, previous judicial interpretations of a disputed
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`claim term may be relevant to the PTAB’s later construction of that same
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`disputed term. . . . While ‘the [PTAB] is not generally bound by a previous
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`judicial interpretation of a disputed claim term[, this] does not mean . . . that
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`it has no obligation to acknowledge that interpretation or to assess whether it
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`is consistent with the [broadest reasonable interpretation] of the term.’”
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`(citing Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326–27 (Fed. Cir.
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`2015)).
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`We are not persuaded that considering the district court’s decision is
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`outside the scope of the remand, as we are directed to evaluate the merits of
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`4 The Petitions in these proceedings were filed on April 20, 2015, prior to
`the effective date of the rule change that replaces the broadest reasonable
`interpretation standard with the federal court claim interpretation standard.
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,340 (Oct. 11, 2018) (“This rule is effective on November 13,
`2018 and applies to all IPR, PGR and CBM petitions filed on or after the
`effective date.”).
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`5
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`

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`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
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`Petitioner’s asserted grounds of unpatentability, which necessarily requires
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`interpreting the challenged claims. See GoPro, 908 F.3d at 695–96. Nor are
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`we persuaded that the timing of Patent Owner’s request presents an issue in
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`doing so. The district court issued its decision after briefing and oral
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`argument in these proceedings, and as such, the parties could not have taken
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`the district court’s decision into account during the original trials. We also
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`limit the scope of the briefing authorized herein to what is directly
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`applicable to arguments made in the original trials. Specifically, the parties
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`are authorized to file a supplemental paper in each of the instant proceedings
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`directed solely to the issue of claim interpretation. In the papers, the parties
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`should cite the specific portion(s) of the district court decision believed to be
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`relevant to an argument made in these proceedings and the specific page(s)
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`in the record containing such argument.
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`Additional Discovery
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`Patent Owner also sought authorization to file a motion for additional
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`discovery in both proceedings pursuant to 37 C.F.R. § 42.51(b)(2). During
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`the original trials in these proceedings, Petitioner submitted two declarations
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`from one of its employees, Damon Jones, to support its position that the
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`GoPro Catalog is a prior art printed publication. See Paper 54, 22–28.
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`Patent Owner stated that it is now in possession of information indicating
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`that certain representations made by Mr. Jones in his declarations were not
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`true, including Mr. Jones’s deposition testimony in the related district court
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`case and a different version of the catalog obtained by Patent Owner. Patent
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`Owner stated that its motion for additional discovery would be limited to
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`three narrow requests: (1) an unredacted copy of the email provided with
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`6
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`

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`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
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`Mr. Jones’s supplemental declaration (Ex. 1023); (2) native files of the
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`GoPro Catalog provided to the Board and the other version of the catalog
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`located by Patent Owner; and (3) any accounting records, receipts, or
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`shipping statements for the printing/shipping of the GoPro Catalog
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`referenced in Exhibit 1023. Patent Owner stated that the purpose of such
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`discovery would be to confirm the truthfulness of Mr. Jones’s statements
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`and determine whether sanctions would be appropriate. See 37 C.F.R.
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`§ 42.11(d) (specifying the procedure for a motion for sanctions).
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`Petitioner disputed Patent Owner’s allegations and argued that the
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`additional discovery sought by Patent Owner would not be in the interests of
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`justice. Petitioner stated that the alleged evidence of misrepresentations by
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`Mr. Jones was raised to both the district court in connection with Petitioner’s
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`motion to stay and to the Federal Circuit in connection with Patent Owner’s
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`appeal, but neither court acted on Patent Owner’s assertions.
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`After further review of the issue and the litigation documents cited by
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`the parties during the call, we are persuaded that briefing is warranted to
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`ensure a full and fair consideration of the issues raised by Patent Owner.
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`Patent Owner in its motion should identify specifically what materials are
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`being requested and explain why it believes the requested discovery is
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`“necessary in the interest of justice.” See 35 U.S.C. § 316(a)(5); 37 C.F.R.
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`§ 42.51(b)(2). We refer the parties to Garmin International, Inc. v. Cuozzo
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`Speed Technologies LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013)
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`(Paper 26) (precedential), for guidance regarding motions for additional
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`discovery. In particular, “[t]he mere possibility of finding something useful,
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`and mere allegation that something useful will be found, are insufficient.”
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`Id. at 6. Accordingly, Patent Owner, in its motion, should identify the
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`7
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`

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`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
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`specific representations in Mr. Jones’s declarations alleged to be false,
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`explain the basis for each allegation, and explain why the requested
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`materials would be useful if produced in these proceedings. Patent Owner
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`also should explain why it believes discovery pertaining to Mr. Jones’s
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`testimony about the GoPro Catalog is permissible in these circumstances,
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`given the Federal Circuit’s instruction that the Board consider the GoPro
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`Catalog as prior art on remand. See GoPro, 908 F.3d at 695–96. Because
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`the facts of the two instant proceedings are similar, the parties shall file a
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`single motion and opposition in both proceedings.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that the Decision on Institution in Case IPR2015-01080 is
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`modified to include review of all challenged claims of the ’954 patent and
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`all grounds asserted in the Petition:
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`References
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`Basis
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`Claims Challenged
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`Boland and GoPro
`Catalog
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`Boland, GoPro
`Catalog, and
`Ueyama
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`35 U.S.C. § 103(a)
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`1–9, 11–20, 22–25,
`and 27–30
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`35 U.S.C. § 103(a)
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`10, 21, and 26
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`FURTHER ORDERED that, in Case IPR2015-01080, the parties are
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`authorized to file, by February 19, 2019, a joint motion to limit the Petition
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`stating that the parties agree to withdraw jointly the newly instituted grounds
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`with respect to claims 3–10 of the ’954 patent from consideration;
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`FURTHER ORDERED that Patent Owner shall file the district court
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`claim construction decision as an exhibit in each of the instant proceedings
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`by February 19, 2019;
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`8
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`

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`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
`
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`FURTHER ORDERED that the parties are authorized to file a
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`supplemental paper in each of the instant proceedings addressing the
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`relevance of the district court claim construction decision to arguments made
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`in the respective proceeding, limited to 350 words and the subject matter
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`explained above, by February 22, 2019;
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`FURTHER ORDERED that Patent Owner is authorized to file a
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`motion for additional discovery by February 26, 2019, limited to seven
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`pages; Petitioner is authorized to file an opposition by March 8, 2019, also
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`limited to seven pages; and no reply is authorized at this time; and
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`FURTHER ORDERED that the parties shall file a single motion and
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`opposition in both proceedings using a caption referring to both proceedings.
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`9
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`

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`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
`
`PETITIONER:
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`David T. Xue
`Karineh Khachatourian
`RIMON LAW
`david.xue@rimonlaw.com
`karinehk@rimonlaw.com
`
`Adam R. Brausa
`DURIE TANGRI LLP
`abrausa@durietangri.com
`
`PATENT OWNER:
`
`Andrew R. Sommer
`John R. Keville
`WINSTON & STRAWN LLP
`asommer@winston.com
`jkeville@winston.com
`
`Nicole M. Jantzi
`Ian B. Brooks
`Paul M. Schoenhard
`McDERMOTT WILL & EMERY LLP
`njantzi@mwe.com
`ian.brooks@ropesgray.com
`paul.schoenhard@ropesgray.com
`
`
`
`
`10
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`