Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 17
`Filed: September 22, 2015
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`______________
`
`
`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.
`
`
`
`
`571.272.7822
`
`
`Paper No. 17
`Filed: September 22, 2015
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`______________
`
`
`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.
`
`
`
`
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`ORDER
`Denying Patent Owner’s Motion for Additional Discovery Regarding
`Real Parties-in-Interest and Dismissing Petitioner’s Motion to Exclude
`Exhibits 2006 and 2010
`35 U.S.C. § 316(a)(5), 37 C.F.R. § 42.51(b)(2), 37 C.F.R. § 42.224,
`37 C.F.R. §§ 42.64(c)
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Upon authorization from the Board (Paper 7),2 Patent Owner filed a
`
`Motion for Additional Discovery from Petitioner of documents relevant to
`
`identifying all real parties-in-interest. Paper 10 (“Discovery Motion”).
`
`Along with its Discovery Motion, Patent Owner submitted 4 proposed
`
`Requests for Production (“RFPs”). Patent Owner also submitted the
`
`Declarations of Richard A. Smith (Ex. 2006) and Dennis J. Reinhold (Ex.
`
`2011) in support of its Discovery Motion. Petitioner opposes Patent
`
`Owner’s Motion. Paper 12 (“Discovery Opposition”). Petitioner also
`
`submitted the Declaration of Brian D. Oliver (Ex. 1022) in support of its
`
`Opposition. Petitioner then filed a Motion to Exclude Exhibits 2006 and
`
`2011 (Paper 15), to which Patent Owner filed an Opposition (Paper 17).
`
`
`2 All citations are to CBM2015-00145 unless otherwise stated.
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`
`
`In its Discovery Motion, Patent Owner seeks additional discovery
`
`regarding Petitioner’s representations regarding the real parties-in-interests
`
`identified in the pending Petitions for the above listed cases. According to
`
`Patent Owner, Petitioner is owned by American Securities and it is
`
`American Securities that “controls disputed intellectual property matters.”
`
`Discovery Motion, 1. Patent Owner contends that during the course of
`
`settlement negotiations between the parties, Petitioner’s CEO, Brian D.
`
`Oliver, stated “that he could not accept any settlement offer without
`
`American Securities’ prior approval.” Id. Patent Owner then contends that
`
`“American Securities calls the shots,” which “strongly suggest[s] that
`
`American Securities ‘could have exercised control’ over these proceedings.”
`
`Id. at 2–3. Therefore, Patent Owner concludes that additional discovery is
`
`necessary to determine if American Securities should have been identified as
`
`a real party-in-interest in the Petition Id. at 5.
`
`Petitioner opposes Patent Owner’s Discovery Motion, arguing that the
`
`motion is based on “mere speculation, heresay, and an inexcusable breach of
`
`confidentiality by its executives who disclose statements made during
`
`settlement negotiations. [Patent Owner’s] speculative statements do not
`
`suggest that [Patent Owner] will uncover any evidence that [American
`
`Securities] funded and controlled these proceedings.” Discovery
`
`Opposition, 2. Petitioner then contends that (1) the declarations submitted
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`
`
`by Patent Owner violate Fed. R. Evidence 408, which prevents the offering
`
`into evidence of statements made during settlement, and (2) the declarations
`
`are incorrect because Mr. Oliver, the CEO of Petitioner, stated he could not
`
`settle any dispute without Petitioner’s Board approval, not American
`
`Securities’ Board approval. Id. at 3. Petitioner argues that Patent Owner’s
`
`Discovery Motion fails to meet the “the Garmin/Bloomberg factors” and
`
`should be denied. Id. at 2.
`
`For the reasons stated below, Patent Owner’s Discovery Motion is
`
`denied and Petitioner’s Motion to Exclude Exhibits 2006 and 2011 is
`
`dismissed as moot.
`
`II. DISCUSSION
`
`A. Motion for Additional Discovery
`
`Certain discovery is available in inter partes review proceedings. 35
`
`U.S.C. § 316(a)(5); 37 C.F.R. §§ 42.51–53 (inter partes review); 37 C.F.R. §
`
`42.224 (post grant review and covered business method review). Such
`
`discovery, however, is less than what is normally available in district court
`
`patent litigation, as Congress intended inter partes review to be a quick and
`
`cost-effective alternative to litigation. See H. Rep. No. 112-98, at 45–48
`
`(2011). 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); 37 C.F.R. §
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`
`
`42.51(b)(2)(i); 37 C.F.R. § 42.224 (additional discovery for post grant
`
`review and covered business method review “may be granted upon a
`
`showing of good cause. . . . .”). As the movant, Patent Owner bears the
`
`burden of establishing it is entitled to additional discovery. 37 C.F.R. §§
`
`42.20(c), 42.224.
`
`The legislative history of relevant statutes clarifies that additional
`
`discovery should be confined to “particular limited situations, such as minor
`
`discovery that PTO finds to be routinely useful, or to discovery that is
`
`justified by the special circumstances of the case.” 154 Cong. Rec. S9988
`
`(daily ed. Sept. 27, 2008) (statement of Sen. Kyl). In light of this, and given
`
`the statutory deadlines required by Congress for inter partes review
`
`proceedings, we are conservative in authorizing additional discovery.
`
`We generally consider five factors (the “Garmin/Bloomberg factors”)
`
`in determining whether a discovery request meets the statutory and
`
`regulatory necessary “in the interests of justice” standard. See Garmin Int’l,
`
`Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7
`
`(PTAB Mar. 5, 2013) (Paper 26) (informative); as modified for Covered
`
`Business Method Patent Reviews by Bloomberg, Inc. v. Market-Alerts Pty,
`
`Ltd., Case CBM2013-00005, slip op. at 4 (PTAB May 29, 2013) (Paper 32).
`
`These factors are: (1) there must be more than a mere possibility of finding
`
`something useful; (2) a party may not seek another party’s litigation
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`
`
`positions or the underlying basis for those positions; (3) a party should not
`
`seek information that reasonably can be generated without a discovery
`
`request; (4) instructions and questions should be easily understandable; and
`
`(5) the discovery requests must not be overly burdensome to answer.
`
`Garmin, slip op. at 6–7; Bloomberg, slip op. at 5. As there is no substantial
`
`dispute as to Garmin/Bloomberg factors 2, 3, and 4, we address the
`
`remaining factors 1 and 5 below, in determining whether we should grant
`
`Patent Owner’s Discovery Motion.
`
`1. Whether Something Useful Will be Found
`
`The first Garmin/Bloomberg factor considers whether there exists
`
`more than “mere possibility” or “mere allegation that something useful [to
`
`the proceeding] will be found,” and specifically “[t]he party requesting
`
`discovery should already be in possession of evidence tending to show
`
`beyond speculation that in fact something useful will be uncovered.”
`
`Garmin, slip op. at 6; Bloomberg, slip op. at 5. Under this factor, a party
`
`should provide a specific factual reason for reasonably expecting that
`
`discovery will be useful. Bloomberg, slip op. at 5. In this context, “useful”
`
`means favorable in substantive value to the moving party’s contention. Id.
`
`In its Motion, Patent Owner contends there are specific factual
`
`reasons for reasonably expecting that American Securities is controlling
`
`Petitioner in general and also has the ability to control these Proceedings, in
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`
`
`which case Petitioner should have named American Securities as a real
`
`party-in-interest pursuant to 35 U.S.C § 322(a)(2). Discovery Motion, 1.
`
`Specifically, Patent Owner contends (1) Petitioner is owned by American
`
`Securities, (2) two partners at American Securities are on the Board of
`
`Directors for Petitioner, and (3) Petitioner implements American Securities’
`
`business strategy. Id. at 1–2. In support of these contentions, Patent Owner
`
`directs us to a general American Securities’ publication, in which American
`
`Securities outlines how it provides its companies with financial and
`
`operational support. Id. at 1 (citing Ex. 2005). Patent Owner also directs us
`
`to American Securities’ website, which features Petitioner’s CEO discussing
`
`“the American Securities strategy.” Id. at 2 (citing Exs. 2009, 2010).
`
`Patent Owner further contends that Petitioner’s CEO made statements
`
`during settlement negotiations with Patent Owner that indicate American
`
`Securities, not Petitioner, controls disputed intellectual property matters. Id.
`
`at 1 (citing Exs. 2006, 2011). According to Patent Owner, Petitioner’s CEO,
`
`Mr. Oliver, stated he could not accept a settlement offer without American
`
`Securities’ prior approval. Id.
`
`Petitioner contests Patent Owner’s position, arguing that the discovery
`
`requests are based on speculation. According to Petitioner, the declarations
`
`supporting Patent Owner’s Discovery Motion are incorrect, because
`
`Petitioner’s CEO explains he is not authorized to settle any dispute without
`
`7
`
`
`
`
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`
`
`Petitioner’s Board approval; the approval of American Securities’ Board of
`
`Directors is not required. Id. at 3 (citing Ex. 1022). Petitioner further argues
`
`that Patent Owner should not have submitted Exhibits 2006 and 2011,
`
`because statements made during settlement are protected by Fed. R.
`
`Evidence 408. Id. Petitioner contends that Patent Owner “impermissibly
`
`uses settlement negotiations in an attempt to impeach [Petitioner’s] RPI
`
`certification.” Id. at 3–4. Petitioner also contends that the existence of
`
`overlapping directors and common employees does not equate to control and
`
`that the information cited by Patent Owner fails to demonstrate that
`
`American Securities exercises any control over these proceedings. Id. at 4.
`
`Petitioner then concludes that Patent Owner’s Discovery Motion fails to
`
`meet the “the Garmin/Bloomberg factors” and should be denied. Id. at 2.
`
`We agree with Petitioner. First, the mere existence of a relationship
`
`between Petitioner and a parent company is insufficient to demonstrate a real
`
`party-in-interest issue. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,760 (Aug. 14, 2012)). Patent Owner has failed to show that
`
`American Securities and Petitioner do not have corporate boundaries and are
`
`inextricably intertwined. See, e.g., Atlanta Gas Light Co. v. Bennett
`
`Regulator Guards, Inc., Case IPR2013-00453, slip op. at 11 (PTAB Jan. 6,
`
`2015) (Paper 88) (determining that “[r]ather than maintaining well-defined
`
`corporate boundaries, [the parent and its subsidiaries] are so intertwined that
`
`8
`
`
`
`
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`
`
`it is difficult for both insiders and outsiders to determine precisely where one
`
`ends and another begins”).
`
`Second, the existence of common directors or employees between
`
`American Securities and Petitioner is insufficient to show a real party-in-
`
`interest issue unless the directors controlled or participated in the filing of
`
`the proceedings. See, e.g., Fieldcomm Group v. SIPCO, LLC, IPR2015-
`
`00659, slip op. at 3–4 (PTAB June 18, 2015) (Paper 10). There is no
`
`persuasive evidence presented, however, that the common officers between
`
`the American Securities and Petitioner were involved in the filing of the
`
`present proceedings or had the ability to direct the filing of the present
`
`proceedings or that American Securities provided any prior art to Petitioner
`
`in the instant proceedings.
`
`Lastly, ambiguous and unreliable statements made by a non-lawyer
`
`CEO during settlement negotiations covering “ongoing intellectual property
`
`disputes” (see Discovery Motion, 1) fail to demonstrate that American
`
`Securities funded and controlled the specific proceedings identified above.
`
`Consequently, we are unpersuaded that Patent Owner’s argument for
`
`seeking information relating to the possible funding or control of these
`
`proceedings by others is based on more than a mere possibility that
`
`something useful will be found. Thus, the first Garmin/Bloomberg factor
`
`9
`
`
`
`
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`
`
`does not weigh in favor of granting the Discovery Motion as to RFP Nos. 1–
`
`4.
`
`2. Requests Not Overly Burdensome to Answer
`
`The fifth Garmin/Bloomberg factor considers whether requests are
`
`“overly burdensome to answer given the expedited nature” of the
`
`proceedings and “[r]equests [for additional discovery] should be sensible
`
`and responsibly tailored according to a genuine need.” Garmin, slip op. at
`
`7; Bloomberg, slip op. at 5. In evaluating the burden, we consider the
`
`financial and human resources burden in meeting procedural deadlines.
`
`Bloomberg, slip op. at 5.
`
`Patent Owner contends its requests for additional discovery will not
`
`require significant resources or time, as the requests only seek identification
`
`of certain entities, communications, or funding sources specifically related to
`
`these proceedings. Discovery Motion 4 (citing John’s Lone Start Distrib. V.
`
`Thermolife Int’l, LLC, Case IPR2014-01201, slip op. at 9 (PTAB May 13,
`
`2015) (Paper 29).
`
`Petitioner disputes Patent Owner’s characterization of the discovery
`
`requests, arguing that the requests seek broader discovery than the issue of
`
`American Security’s involvement in these proceedings. Discovery Opposition,
`
`5. Specifically, Petitioner contends that the requests are not narrowly tailored
`
`and are overly burdensome. Id. Petitioner cites to RFP No. 1, which seeks
`
`10
`
`
`
`
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`
`
`discovery of “all individuals” who provided direction to, or had authority to
`
`provide direction to Petitioner in relation to any of the proceedings, as an
`
`example of an overly broad and burdensome discovery request. Id. (citing
`
`Discovery Motion, 7). Petitioner also cites to RFP No. 2 as seeking
`
`communications related to the “the validity/invalidity of the patents challenged
`
`in the proceedings,” and thus, seek information beyond that of the identity of
`
`the real parties-in-interest. Id.
`
`We agree with Petitioner that RFP Nos. 1 and 2 are overly
`
`burdensome or not responsibly tailored to identifying whether American
`
`Securities funds or controls the Proceedings. Furthermore, we are not
`
`persuaded Patent Owner has demonstrated that RFP Nos. 3 and 4 are
`
`responsibly tailored according to a genuine need. Accordingly, we
`
`determine that the fifth Garmin/Bloomberg factor weighs against granting
`
`RFP Nos. 1–4.
`
`We have considered the evidence and arguments proffered by Patent
`
`Owner in support of its Motion. In considering the Garmin/Bloomberg
`
`factors, we determine that Patent Owner has not met its burden in showing
`
`its requested discovery is necessary “in the interests of justice,” as required
`
`for additional discovery under 37.C.F.R. § 42.51(b)(2)(i) or that there is
`
`“good cause” for additional discovery as required under 37 C.F.R. § 42.224.
`
`11
`
`
`
`
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`
`
`B. Motion to Exclude Exhibits 2006 and 2011
`
`Under 37 C.F.R. §§ 42.64(c), a party may move to exclude evidence.
`
`Such a motion may be filed without prior authorization from the Board.
`
`Petitioner filed a Motion to Exclude Exhibits 2006 and 2011 arguing
`
`the exhibits violate Fed. R. Evidence 408. Paper 15, 2. According to
`
`Petitioner, the two declarations filed by Patent Owner in support of its
`
`Motion for Additional Discovery allegedly recount statements made by
`
`Petitioner’s CEO during settlement discussions. Id. at 1–2. Petitioner
`
`contends that Fed. R. Evidence 408 prohibits the offering into evidence of
`
`statements made during settlement negotiations. Id. at 2. Petitioner further
`
`contends that Fed. R. Evidence 408 applies to Exhibits 2006 and 2011
`
`because they are offered to contradict statements in the Petition. Id. at 4.
`
`Patent Owner opposes Petitioner’s Motion to Exclude Exhibits 2006 and
`
`2011. Paper 17. Specifically, Patent Owner argues that Exhibits 2006 and
`
`2011are not barred by Fed. R. Evidence 408, because the Exhibits are not
`
`offered for either of the two enumerated purposes to which the Fed. R.
`
`Evidence 408 applies: to prove a claim or to impeach, and “[t]he rule
`
`specifically permits such evidence . . . for any other purpose.” Id. at 1
`
`(citing In re MSTG, 675 F.3d 1337, 1344 (Fed. Cir. 2012)). According to
`
`Patent Owner, it did not offer the evidence to impeach Petitioner, because
`
`there was no testimony in the record before Patent Owner submitted its
`
`12
`
`
`
`
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`
`
`evidence. Id. (citing U.S. v. Colombo, 869 F.2d 149, 153 (2d Cir. 1989)
`
`(emphases added). Rather, Patent Owner contends it offered the evidence
`
`for a purpose not prohibited by Fed. R. Evidence 408—“to demonstrate that
`
`[Petitioner] held itself out as being controlled by American Securities.” Id.
`
`The current situation does not require us to assess the merits of
`
`Petitioner’s Motion to Exclude. As discussed above, even without excluding
`
`Patent Owner’s supporting evidence, we have determined that Patent Owner
`
`failed to meet its burden of showing that its requests for additional discovery
`
`with either “in the interest of justice” or supported by “good cause.” See,
`
`e.g., 37 C.F.R. §§ 42.52(b)(2) (inter partes review); 37 C.F.R. § 42.224
`
`(post grant review and covered business method review).
`
`Accordingly, Petitioner’s Motion to Exclude Exhibits 2006 and 2011
`
`as evidence is dismissed as moot.
`
`III. CONCLUSION
`
`On balance, considering the Garmin/Bloomberg factors, Patent Owner
`
`has not met its burden for showing the requested discovery is “in the
`
`interests of justice,” as required for additional discovery under 37.C.F.R.
`
`§ 42.51(b)(2)(i) or that there is “good cause” for additional discovery as
`
`required under 37 C.F.R. § 42.224. Thus, Patent Owner’s Motion for
`
`Additional Discovery is denied and Petitioner’s Motion to Exclude Exhibits
`
`2006 and 2011 as evidence is dismissed as moot.
`
`13
`
`
`
`
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`IV. ORDER
`
`Accordingly, it is
`
`
`
`ORDERED that Patent Owner’s Motion for Additional Discovery is
`
`denied;
`
`FURTHER ORDERED that Petitioner’s Motion to Exclude Exhibits
`
`2006 and 2011 as evidence is dismissed as moot
`
`
`
`
`
`14
`
`
`
`
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`For PETITIONER:
`
`Michael Specht
`Michael Ray
`Ross Hicks
`Lori Gordon
`Salvado Bezos
`Dina Blikshteyn
`Ray Richardson
`Lauren Schleh
`Daniel Block
`Joseph Mutschelknaus
`Sterne Kessler Goldstein & Fox PLLC
`mspecht-PTAB@skgf.com
`mray-PTAB@skgf.com
`mray-PTAB@skgf.com
`lgordon-PTAB@skgf.com
`lgordon-PTAB@skgf.com
`dblikshteyn-PTAB@skgf.com
`rrichardson-PTAB@skgf.com
`lschleh-PTAB@skgf.com
`dblock-ptab@skgf.com
`jmutsche-PTAB@skgf.com
`
`For PATENT OWNER:
`
`Erika Arner
`Darren Jiron
`Michael Young
`Daniel Tucker
`Brandon Bludau
`
`15
`
`
`
`
`
`
`
`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 8,885,280) PGR2015-00014 (Patent 8,929,525)
`
`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
`
`
`
`
`16
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