throbber
Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 8
`Filed: August 14, 2015
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`1 This Order addresses issues that are the same in all ten cases. Therefore,
`we exercise our discretion to issue one Decision to be filed in each case.
`The parties are authorized to use this style heading for only the papers
`indicated this Order.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`
`
`Cases1
`CBM2015-00145 (Patent 7,860,222) IPR2015-01219 (Patent 8,626,118)
`IPR2015-01220 (Patent 7,494,061) IPR2015-01221 (Patent 8,489,068)
`IPR2015-01222 (Patent 8,750,486) IPR2015-01223 (Patent 7,961,860)
`IPR2015-01225 (Patent 8,886,663) IPR2015-01226 (Patent 8,135,115)
`PGR2015-00013 (Patent 8,855,280) PGR2015-00014 (Patent 8,929,525)
`______________
`
`

`
`CBM2015-00145 (Patent 7,860,222) IPR2015-01219 (Patent 8,626,118)
`IPR2015-01220 (Patent 7,494,061) IPR2015-01221 (Patent 8,489,068)
`IPR2015-01222 (Patent 8,750,486) IPR2015-01223 (Patent 7,961,860)
`IPR2015-01225 (Patent 8,886,663) IPR2015-01226 (Patent 8,135,115)
`PGR2015-00013 (Patent 8,855,280) PGR2015-00014 (Patent 8,929,525)
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`A conference call in the above proceeding was held on August 13,
`2015, between Lori A. Gordon, Michel D. Specht, Michael B. Ray, and
`Salvador M. Bezos for Petitioner, Darren M. Jiron and Daniel C. Tucker for
`Patent Owner, and Judges Braden, Benoit, and Turner. Patent Owner sought
`authorization to file a motion for additional discovery regarding Petitioner
`Global Tel*Link Corporation’s representations regarding the real parties-in-
`interests identified in the pending Petitions for the above listed cases.
`
`On the call, Patent Owner represented that Petitioner is owned and
`controlled by American Securities LLC, and that Petitioner does not have
`authority to settle any of the above listed cases without approval from its
`parent company. Patent Owner asserted that it is in possession of settlement
`documents from Petitioner that support its allegations. According to Patent
`Owner, American Securities LLC should have been identified by Petitioner
`as a real party-in-interest. Thus, Patent Owner seeks additional discovery
`regarding American Securities LLC and Petitioner in the above listed cases.
`Petitioner opposed Patent Owner’s request, arguing that although
`American Securities LLC owns Global Tel*Link Corporation, it does not
`control Petitioner in regards to the above listed cases. According to
`
`2
`
`
`
`

`
`CBM2015-00145 (Patent 7,860,222) IPR2015-01219 (Patent 8,626,118)
`IPR2015-01220 (Patent 7,494,061) IPR2015-01221 (Patent 8,489,068)
`IPR2015-01222 (Patent 8,750,486) IPR2015-01223 (Patent 7,961,860)
`IPR2015-01225 (Patent 8,886,663) IPR2015-01226 (Patent 8,135,115)
`PGR2015-00013 (Patent 8,855,280) PGR2015-00014 (Patent 8,929,525)
`
`
`Petitioner, Patent Owner relies on mere speculation of finding something
`useful as the basis to request a motion for additional discovery.
`
`We authorized Patent Owner to file a motion for additional discovery.
`During the call, we reminded Patent Owner that a party seeking discovery
`beyond what is expressly permitted by rule must show that such additional
`discovery is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5);
`35 U.S.C. § 326(a)(5); 37 C.F.R. § 42.51(b)(2)(i). We generally consider
`various factors in determining whether additional discovery in a proceeding
`is necessary in the interest of justice, and such factors are discussed in
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case No. IPR2012-00001,
`slip op. at 6–7 (PTAB, Mar. 5, 2013) (Paper 26).
`One factor, as discussed in Garmin, requires more than the “mere
`possibility of finding something useful” or a “mere allegation that something
`useful will be found.” Garmin, slip op. at 6. A “party requesting discovery
`should already be in possession of evidence tending to show beyond
`speculation that in fact something useful will be uncovered.” Id. Thus, we
`directed Patent Owner provide with its motion all documents in support of
`its position.2 Another factor, as noted in Garmin, is that a request also
`
`
`2 No protective order has been entered in this proceeding. The parties are
`reminded of the requirement for a protective order when filing a motion to
`seal. 37 C.F.R. § 42.54. If the parties have agreed to a proposed protective
`
`
`3
`
`
`
`

`
`CBM2015-00145 (Patent 7,860,222) IPR2015-01219 (Patent 8,626,118)
`IPR2015-01220 (Patent 7,494,061) IPR2015-01221 (Patent 8,489,068)
`IPR2015-01222 (Patent 8,750,486) IPR2015-01223 (Patent 7,961,860)
`IPR2015-01225 (Patent 8,886,663) IPR2015-01226 (Patent 8,135,115)
`PGR2015-00013 (Patent 8,855,280) PGR2015-00014 (Patent 8,929,525)
`
`
`should be “responsibly tailored according to a genuine need.” Id. We
`indicated to Patent Owner that all discovery requests must be specific and
`narrowly tailored; we will not authorize the casting of a broad net into
`Petitioner’s records with only the mere hope of finding something relevant.
`Furthermore, during our call we directed Patent Owner to address how
`its discovery requests are relevant to an inquiry into a real party-in-interest
`issue. Our prior cases and our Practice Guide provide guidance regarding
`factors to consider in determining whether a party is a real party in interest.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug.
`14, 2012); Shopkick Inc. v. Novitaz, Inc., Case No. IPR2015-00279, slip op.
`at 10–12 (PTAB, May 29, 2015) (Paper 7).
`Lastly, we note that Ms. Lori A. Gordon and Mr. Salvador M. Bezos
`participated in the call on behalf of Petitioner. Ms. Gordon and Mr. Bezos,
`however, have not been identified as lead or backup counsel for Petitioner in
`
`
`order, including the Standing Default Protective Order, Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, App. B (Aug 14, 2012), they should
`file a signed copy of the proposed protective order with the motion to seal.
`If the parties choose to propose a protective order other than, or departing
`from, the default Standing Protective Order, they must submit a joint,
`proposed protective order, accompanied by a red-lined version based on the
`default protective order in Appendix B to the Board’s Office Patent Trial
`Practice Guide.
`
`4
`
`
`
`

`
`CBM2015-00145 (Patent 7,860,222) IPR2015-01219 (Patent 8,626,118)
`IPR2015-01220 (Patent 7,494,061) IPR2015-01221 (Patent 8,489,068)
`IPR2015-01222 (Patent 8,750,486) IPR2015-01223 (Patent 7,961,860)
`IPR2015-01225 (Patent 8,886,663) IPR2015-01226 (Patent 8,135,115)
`PGR2015-00013 (Patent 8,855,280) PGR2015-00014 (Patent 8,929,525)
`
`
`the case, a power of attorney designating Ms. Gordon or Mr. Bezos as
`counsel has not been filed by Petitioner, nor has a motion for Pro Hac Vice
`admission been filed for Ms. Gordon or Mr. Bezos. 37 C.F.R. § 42.10. If
`Petitioner intends to be represented by Ms. Gordon and/or Mr. Bezos, and
`Ms. Gordon and Mr. Bezos are authorized to conduct business on behalf of
`Petitioner’s lead counsel, then Ms. Gordon and Mr. Bezos must be
`identified, as required under 37 C.F.R. § 42.10(a). Without strict
`compliance with the strictures of 37 C.F.R. § 42.10, Ms. Gordon and Mr.
`Bezos will not be permitted to participate in this proceeding.
`Accordingly, it is
`ORDERED that Patent Owner is authorized to file a motion for
`additional discovery under 37 C.F.R. § 42.51(b)(2), said motion limited to
`seven (7) pages, inclusive of Patent Owner’s specific discovery requests;
`FURTHER ORDERED that Patent Owner file its motion for
`additional discovery and all supporting documents on or before 12:00 pm
`EST on Monday, August 24, 2015;
`FURTHER ORDERED that Patent Owner’s motion for additional
`discovery may address all of the above listed cases in one common
`document that must be filed separately in each proceeding;
`FURTHER ORDERED that Petitioner may file its opposition to the
`motion on or before by 12:00 pm EST on Monday, August 31, 2015, said
`opposition limited to five (5) pages;
`
`5
`
`
`
`

`
`CBM2015-00145 (Patent 7,860,222) IPR2015-01219 (Patent 8,626,118)
`IPR2015-01220 (Patent 7,494,061) IPR2015-01221 (Patent 8,489,068)
`IPR2015-01222 (Patent 8,750,486) IPR2015-01223 (Patent 7,961,860)
`IPR2015-01225 (Patent 8,886,663) IPR2015-01226 (Patent 8,135,115)
`PGR2015-00013 (Patent 8,855,280) PGR2015-00014 (Patent 8,929,525)
`
`
`FURTHER ORDERED that Petitioner’s opposition to the motion may
`address all of the above listed cases in one common document that must be
`filed separately in each proceeding;
`FURTHER ORDERED that Petitioner’s counsel must comply with
`the requirements of 37 C.F.R. § 42.10 in order to represent Petitioner during
`this proceeding.
`
`
`
`
`
`6
`
`
`
`

`
`CBM2015-00145 (Patent 7,860,222) IPR2015-01219 (Patent 8,626,118)
`IPR2015-01220 (Patent 7,494,061) IPR2015-01221 (Patent 8,489,068)
`IPR2015-01222 (Patent 8,750,486) IPR2015-01223 (Patent 7,961,860)
`IPR2015-01225 (Patent 8,886,663) IPR2015-01226 (Patent 8,135,115)
`PGR2015-00013 (Patent 8,855,280) PGR2015-00014 (Patent 8,929,525)
`
`
`
`
`7
`
`
`
`FOR PETITIONER:
`
`Michael D. Specht
`Salvador M. Bezos
`Lori Gordon
`Michael B. Ray
`Ross G. Hicks
`Dina Blikshteyn
`Lauren Schleh
`Daniel Block
`Ryan Richardson
`Joseph Mutschelknaus
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-PTAB@skgf.com
`sbezos-PTAB@skgf.com
`lgordon-PTAB@skgf.com
`mray-PTAB@skgf.com
`rhicks-PTAB@skgf.com
`dblikshteyn-PTAB@skgf.com
`lschleh-PTAB@skgf.com
`dblock-ptab@skgf.com
`rrichardson-PTAB@skgf.com
`jmutsche-PTAB@skgf.com
`
`
`
`

`
`CBM2015-00145 (Patent 7,860,222) IPR2015-01219 (Patent 8,626,118)
`IPR2015-01220 (Patent 7,494,061) IPR2015-01221 (Patent 8,489,068)
`IPR2015-01222 (Patent 8,750,486) IPR2015-01223 (Patent 7,961,860)
`IPR2015-01225 (Patent 8,886,663) IPR2015-01226 (Patent 8,135,115)
`PGR2015-00013 (Patent 8,855,280) PGR2015-00014 (Patent 8,929,525)
`
`
`FOR PATENT OWNER:
`
`Erika H. Arner
`Darren M. Jiron
`Michael Young
`Daniel Tucker
`Brandon Bludau
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`darren.jiron@finnegan.com
`michael.young@finnegan.com
`daniel.tucker@finnegan.com
`brandon.bludau@finnegan.com
`
`
`
`8

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