Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 83
`Entered: March 26, 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.
`
`DECISION
`Denying Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)(i)
`
`
`1 This Decision addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue a single Decision to be filed in each case.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`571-272-7822
`
`
`
`
`Paper No. 83
`Entered: March 26, 2019
`
`
`
`
`
`
`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.
`
`DECISION
`Denying Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)(i)
`
`
`1 This Decision addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue a single Decision to be filed in each case.
`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)
`
`
`Patent Owner Contour IP Holding LLC (“Patent Owner’) filed a
`Motion for Additional Discovery in the instant proceedings, and Petitioner
`GoPro, Inc. (“Petitioner” or “GoPro”) filed an Opposition.2 For the reasons
`stated below, Patent Owner’s Motion is denied.
`
`
`Background
`The instant proceedings are on remand from the United States Court
`of Appeals for the Federal Circuit. During the original trials, Petitioner
`submitted two declarations from Damon Jones in support of its position that
`the GoPro Catalog (Ex. 1011) is a prior art printed publication under
`35 U.S.C. § 102(b). See Exs. 1012, 1022. Specifically, Mr. Jones testified
`that he attended and distributed copies of the GoPro Catalog at the Tucker
`Rocky Dealer Show in 2009. Ex. 1012 ¶¶ 5, 8. The panel determined in
`each proceeding that Petitioner had not established that the GoPro Catalog is
`a prior art printed publication. Paper 54, 30 (“Final Dec.”).
`The Federal Circuit subsequently vacated the Final Written Decisions
`and remanded to the Board. GoPro, Inc. v. Contour IP Holding LLC,
`908 F.3d 690 (Fed. Cir. 2018). The Federal Circuit found that because the
`GoPro Catalog was distributed sufficiently at the Tucker Rocky Dealer
`Show, “[Petitioner] met its burden to show that its catalog is a printed
`publication under § 102(b).” Id. at 695 & n.5. The Federal Circuit further
`stated: “Because the Board refused to accept the GoPro Catalog as a printed
`publication, it did not consider the merits of [Petitioner’s] obviousness
`
`2 See IPR2015-01078, Papers 72 (authorizing filing of the Motion),
`76 (“Mot.”), 78 (“Opp.”); IPR2015-01080, Papers 74, 80, 83. Although the
`analysis herein applies to both proceedings, we refer to the papers and
`exhibits filed in Case IPR2015-01078 for convenience.
`2
`
`
`
`
`
`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
`
`claims. On remand, the Board shall consider the GoPro Catalog as prior art
`and evaluate the merits of [Petitioner’s] unpatentability claims.” Id. at
`695–96 (citations omitted).
`
`
`Analysis
`In an inter partes review, a party seeking discovery beyond what is
`expressly permitted by rule must do so by motion, and must show that such
`additional discovery is “necessary in the interest of justice.” 35 U.S.C.
`§ 316(a)(5); see 37 C.F.R. § 42.51(b)(2)(i). Patent Owner, as the movant,
`bears the burden of demonstrating that it is entitled to the additional
`discovery sought. 37 C.F.R. § 42.20(c). We consider the five factors set
`forth in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-
`00001 (PTAB Mar. 5, 2013) (Paper 26) (precedential) (“Garmin”), in
`determining whether additional discovery is necessary in the interest of
`justice.
`Patent Owner in its Motion seeks the following discovery:
`(1)
`“an unredacted copy of the email provided as Exhibit A
`to Mr. Jones’s supplemental declaration” (Ex. 1023);
`“native versions with all metadata of two versions of the
`HD Hero catalog (i.e., (a) the version offered to the
`Board, [Ex. 1011]; and (b) the version located on an
`archived version of GoPro’s website identified as ‘v01,’
`see Ex. 2017)”; and
`“copies of records showing payments for the copies of
`the brochures, receipts associated with the brochure,
`[and] shipping statements to corroborate or disprove that
`the catalog proffered to the Board was created and
`delivered before the Tucker Rocky dealer show in 2009.”
`
`(2)
`
`(3)
`
`
`
`3
`
`
`
`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
`
`Mot. 1. Patent Owner argues that “information discovered by Patent Owner
`during the parties’ district court litigation . . . raises substantial questions
`about the veracity of Mr. Jones’[s] declarations and the catalog.” Id. at 2.
`Patent Owner acknowledges the Federal Circuit’s instruction that we must
`consider the GoPro Catalog as prior art on remand, but argues that
`authorizing additional discovery is permissible “notwithstanding the
`mandate” because “[t]he question of whether a fraud has been perpetrated
`upon the Board” is a different issue from whether the GoPro Catalog is prior
`art. Id. at 5. According to Patent Owner, the requested discovery “will
`permit the Board to determine whether the proffered GoPro Catalog is what
`Petitioner purports it to be, and whether Mr. Jones was truthful” in his
`original declarations. Id. Petitioner opposes the Motion, arguing that
`re-litigating the authenticity of the GoPro Catalog is inappropriate at this late
`stage, Patent Owner was not diligent in seeking the requested discovery,
`Patent Owner’s requests are based only on speculation, and the requests are
`unduly burdensome. Opp. 1.
`The first Garmin factor asks whether the party seeking additional
`discovery demonstrates more than “[t]he mere possibility of finding
`something useful, and mere allegation that something useful will be found.”
`Garmin at 6. “The party requesting discovery should already be in
`possession of evidence tending to show beyond speculation that in fact
`something useful will be uncovered.” Id. “Useful” in this context means
`“favorable in substantive value to a contention of the party moving for
`discovery,” not just “relevant” or “admissible.” Id. at 7.
`Patent Owner makes three arguments in support of this factor. First,
`Patent Owner states that it located two other “versions of the GoPro
`
`
`
`4
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`
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`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
`
`Catalog” (referred to as “v01” and “v04”) on “archived versions of GoPro’s
`website” that postdate the Tucker Rocky Dealer Show and do not include the
`specific portion Petitioner relies on for its unpatentability arguments.
`Mot. 2–3 (citing Exs. 2017, 2019, 2027, 2029). Patent Owner also argues
`that the part number referenced in the relied upon portion of the GoPro
`Catalog does not appear anywhere else online. Id. at 3 (citing Ex. 2028).
`According to Patent Owner, these facts raise uncertainty as to exactly what
`document Petitioner submitted to the Board. Id. Petitioner responds that
`Patent Owner’s arguments are speculative because the cited files are not
`actually “versions” of the GoPro Catalog, but “different catalogs” altogether.
`Opp. 5. According to Petitioner, the GoPro Catalog (Ex. 1011) is for “the
`HD Motorsports HERO product,” whereas the “v01” catalog (Ex. 2017) is
`for “the entire HD HERO product line.” Opp. 5 (emphases omitted).
`We agree with Petitioner that the GoPro Catalog (Ex. 1011) is a
`different catalog from the “v01” and “v04” catalogs (Exs. 2017, 2019).
`Although certain portions of the catalogs are the same, there are numerous
`differences indicating that the GoPro Catalog (Ex. 1011) is not simply a
`different version of the archived versions submitted by Patent Owner, but
`rather is a different catalog directed to the HD Motorsports HERO product
`line.3 Most importantly, the introductory text is different. The GoPro
`Catalog states: “Introduc[]ing the HD MotorsportsHERO.” Ex. 1011, 2.
`In contrast, the “v01” and “v04” catalogs are not limited to the
`HD Motorsports HERO, but rather are directed to: “The HD HERO line of
`
`
`3 The “v01” catalog (Ex. 2017) and “v04” catalog (Ex. 2019) appear to have
`identical content. For purposes of this discussion, we compare the GoPro
`Catalog (Ex. 1011) primarily to the “v01” catalog (Ex. 2017).
`5
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`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
`
`wearable sports cameras.” Ex. 2017, 2; Ex. 2019, 2. This difference in
`product line is reflected in the content of the various catalogs. The GoPro
`Catalog only describes the HD Motorsports HERO camera and “HD HERO
`Accessories.” Ex. 1011, 3–15. The “v01” catalog, by contrast, includes
`content for the HD Motorsports HERO, as well as the HD Helmet HERO,
`HD Surf HERO, Helmet HERO Wide, Motorsports HERO Wide, Surf
`HERO Wide, RC HERO Wide, Wide HERO, Wrist HERO, and “HERO
`Accessories.” Ex. 2017, 3–23; see also Ex. 2019 (also including HD HERO
`product line content beyond the HD Motorsports HERO). The photographs
`on many of the pages are different as well, supporting Petitioner’s argument
`that the GoPro Catalog (Ex. 1011) is directed to only the HD Motorsports
`HERO product line while the “v01” and “v04” catalogs encompass the entire
`HD HERO product line. Compare Ex. 1011, 3–5, with Ex. 2017, 3–5.
`Thus, we are not persuaded that the cited “v01” and “v04” catalogs are
`“versions” of the GoPro Catalog asserted as prior art in the instant
`proceedings, or that their existence supports more than a mere possibility of
`the requested discovery uncovering something useful.
`Second, Patent Owner argues that during his deposition in the district
`court case, Mr. Jones “recanted parts of his declaration” submitted in these
`proceedings.4 Mot. 2–4. Specifically, Patent Owner contends Mr. Jones
`testified that the GoPro Catalog “was taken from the inventory of these
`catalogs that GoPro maintained,” Ex. 1022 ¶ 9, but later testified during his
`deposition that the catalog was a “personal copy that [he] had,” Ex. 1042,
`44:4–8. When asked specifically where the GoPro Catalog came from,
`however, Mr. Jones responded that “GoPro had a little filing cabinet at my
`
`4 Patent Owner did not cross-examine Mr. Jones in the instant proceedings.
`6
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`
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`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
`
`desk at the time.” Id. at 128:5–21 (emphasis added); see Opp. 4. Thus, we
`do not agree that Mr. Jones contradicted his testimony on the origin of the
`GoPro Catalog.
`Mr. Jones also testified that after the Tucker Rocky Dealer Show and
`prior to September 13, 2009, “GoPro continued to distribute . . . the GoPro
`Catalog to GoPro’s actual and potential customers, dealers and retailers
`through its website,” Ex. 1022 ¶ 10, but later testified during his deposition
`as follows:
`Q. Was the GoPro catalog you distributed at the 2009
`Tucker Rocky dealer show on GoPro’s website after the
`Tucker Rocky dealer show?
`A. The exact one that I distributed, the exact version and
`everything, I don’t know that.
`Ex. 1042, 33:11–15. Again, as Petitioner points out, Mr. Jones clarified
`during his deposition that he knew “there were catalogs available on
`GoPro.com” and that “catalogs were available that were current catalogs at
`the time.” Id. at 33:22–35:2; see Opp. 4. We are not persuaded that the
`cited deposition testimony regarding Petitioner’s website raises substantial
`questions about the veracity of Mr. Jones’s declarations sufficient to justify
`additional discovery now, particularly given that the basis on which the
`GoPro Catalog was found to be prior art (and will be considered as such in
`these proceedings) was its distribution at the Tucker Rocky Dealer Show,
`not any distribution via a website. See GoPro, 908 F.3d at 695 n.5 (“We do
`not reach whether [Mr. Jones’s] testimony [regarding alleged availability on
`a website] standing alone was sufficient to meet GoPro’s burden, as we find
`that distribution at the dealer show was sufficient.”). Indeed, during the
`appeal of the instant proceedings, Patent Owner pointed out the same
`
`
`
`7
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`
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`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
`
`allegedly contradictory testimony to the Federal Circuit in a letter under Fed.
`R. App. P. 28(j), but the Federal Circuit decided the appeal and denied
`Patent Owner’s two petitions for rehearing and motion to stay the mandate
`without referring to it. See Exs. 1043, 1045, 1051, 1054, 1056; Papers 81,
`82. Likewise, the district court, in granting Petitioner’s motion to stay,
`reviewed the same allegedly contradictory testimony from Mr. Jones and did
`not find it “compelling.” Ex. 2023, 7–8.
`Third, Patent Owner states that it “hired a forensic document
`examiner to inspect a paper copy” of the GoPro Catalog and found that
`“[t]he document is missing anti-counterfeiting codes that would have been
`expected to be on the document if it were commercially printed in 2009.”
`Mot. 4–5. Patent Owner cites the district court declaration of Erich J.
`Speckin, where Mr. Speckin testified that he “would expect” that a
`document printed at FedEx/Kinkos in 2009 would have had a particular
`embedded code, but the hard copy he reviewed during the litigation did not
`have such a code, and that it was “unlikely” that copies would have been
`printed at a facility like FedEx/Kinkos on a copier/printer without
`counterfeit protection. Ex. 2022 ¶¶ 12, 14. Again, Patent Owner provided
`the same evidence to the district court in opposing Petitioner’s motion to
`stay. The district court found that
`Speckin’s declaration identified a lack of an embedded code on
`the Catalog that is used with certain printers and copiers and
`presumed that a FedEx/Kinkos would have that type of printer;
`he did not explain why. Even accepting this presumption,
`Speckin only concludes that it was “unlikely” that the Catalog
`was printed where GoPro claims it was. This provides little
`evidentiary basis to assert an intentional misrepresentation to
`the PTAB and says nothing about whether the Catalog was
`distributed at the trade show.
`
`
`
`8
`
`
`
`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
`
`Ex. 2023, 8 (citations omitted). We reach the same conclusion. The
`declaration is conclusory and does not explain sufficiently the bases for
`Mr. Speckin’s opinions. We are not persuaded that it shows more than a
`mere possibility that something useful would be found if we were to permit
`discovery on the copying of the GoPro Catalog in 2009 as Patent Owner
`seeks.
`For the reasons explained above, we are not persuaded by Patent
`Owner’s three arguments. Patent Owner has not shown beyond mere
`speculation that the requested discovery would uncover anything useful for
`the purposes Patent Owner asserts (i.e., to establish that the GoPro Catalog is
`not authentic and that Mr. Jones was not truthful in his original
`declarations). See Mot. 5. The first Garmin factor thus weighs against
`granting the Motion.
`As to the remaining factors, Patent Owner is not seeking information
`about Petitioner’s litigation positions, Patent Owner does not have the ability
`to generate equivalent information by other means, and the requests are
`understandable. See Garmin at 6–7. With respect to the fifth factor,
`“requests must not be overly burdensome to answer” and “should be sensible
`and responsibly tailored according to a genuine need.” Id. at 7. Patent
`Owner argues that the requests are not overly burdensome because Petitioner
`has access to its own files. Mot. 6–7. Petitioner disagrees, arguing that it
`would be overly burdensome to conduct another search of paper and
`electronic files after the original trials in these proceedings and after it
`already did so in connection with the district court case. Opp. 7. We view
`this factor as neutral, as it cannot readily be determined from the record
`before us how burdensome it would be to conduct such a search.
`
`
`
`9
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`
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`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
`
`
`At the same time, however, we agree with Petitioner that the timing
`and posture of these proceedings—on remand from the Federal Circuit
`where we must consider the GoPro Catalog to be prior art—weighs against
`authorizing the requested additional discovery. See id. at 2–3. Patent Owner
`had the opportunity to cross-examine Mr. Jones during the initial trials in
`these proceedings but chose not to do so. Likewise, we do not see any
`reason why Patent Owner could not have located the “v01” and “v04”
`catalogs online and had a document examiner review the GoPro Catalog
`during the initial trials. See 37 C.F.R. § 42.25(b) (“A party should seek
`relief promptly after the need for relief is identified. Delay in seeking relief
`may justify a denial of relief sought.”). Indeed, Patent Owner previously
`filed a motion to exclude the GoPro Catalog, but did not challenge its
`authenticity based on the evidence now asserted. See Paper 44; Final Dec.
`10–13.
`On this record, we conclude that Patent Owner has not met its burden
`to demonstrate that discovery of the requested materials is necessary in the
`interest of justice. Patent Owner has not established beyond mere
`speculation that its requested discovery will uncover something useful.
`Patent Owner made many of the same unsuccessful arguments regarding the
`GoPro Catalog to the district court and the Federal Circuit. Patent Owner’s
`delay in seeking relief until after the remand from the Federal Circuit also
`weighs against authorizing additional discovery at this stage. A decision on
`remand in each proceeding will be issued in due course.
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion for Additional Discovery is
`denied.
`
`
`
`10
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`
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`IPR2015-01078 (Patent 8,896,694 B2)
`IPR2015-01080 (Patent 8,890,954 B2)
`
`PETITIONER:
`
`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
`ibrooks@mwe.com
`pschoenhard@mwe.com
`
`
`
`
`
`11
`
`
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