throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Entered: May 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK
`OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`AMX, LLC,
`Petitioner
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`
`
`Case IPR2016-00572 (Patent 9,049,019 B2)
`Case IPR2016-00573 (Patent 9,019,838 B2)1
`
`
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`________________
`
`ORDER
`Denying Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2) and
`Granting Petitioner’s Motion to Seal
`37 C.F.R. §§ 42.1 and 42.54
`
` I. INTRODUCTION
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 We exercise our discretion and use this joint caption. Absent authorization,
`the parties are not permitted to use this joint caption.
`
`

`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9.019,838 B2)
`
`Pursuant to authorization from the Board (Paper 7), Chrimar Sysems,
`
`Inc. (“Patent Owner”) filed a Motion for Additional Discovery (Paper 10,
`
`“Mot.”),2 to which AMX, LLC (“AMX”) and Dell Inc. (“Dell”)(collectively
`
`“Petitioner”) filed an Opposition (Paper 12, “Opp.”). Substantially similar
`
`motions were filed by Patent Owner seeking additional discovery in each of
`
`IPR2016-00569 and IPR2016-00574.
`
`Patent Owner’s Motion requests additional discovery concerning
`
`whether Petitioner properly identified the real parties-in-interest in its Petition.
`
`Mot. 2; see 35 U.S.C. § 312(a)(2) (requiring a petition to identify all real
`
`parties-in-interest). Petitioner is alleged to be a proxy for unnamed third
`
`parties, including Hewlett-Packard Co. (“HP”) and/or Cisco Systems, Inc.
`
`(“Cisco”). Mot. 2. Patent Owner argues that identifying all real parties-in-
`
`interest have been listed is “critical in determining whether the IPR
`
`proceeding is timed-barred under § 315(b), or in determining the scope of the
`
`estoppel in litigation.” Id.
`
`Petitioner’s Opposition includes citations to Exhibits 1039 and 1040.
`
`Petitioner filed a Motion to Seal those two exhibits (Paper 14, “Motion to
`
`Seal,” “Mot. Seal”). Petitioner also proposes entry of the default protective
`
`order. Mot. Seal 1. Patent Owner does not oppose the Motion to Seal and
`
`agrees to the entry of the default protective order. Id.
`
`
`
`
`
`
`
`II. MOTION FOR ADDITIONAL DISCOVERY CONCERING REAL
`
`
`2 Citations are to papers filed in IPR2016-00572, unless otherwise noted.
`2
`
`
`

`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9.019,838 B2)
`
`PARTIES-IN-INTEREST
`
` A
`
` party seeking discovery beyond routine discovery that is expressly
`
`permitted by rule must do so by motion, and must show that such additional
`
`discovery is in the interests of justice. 35 U.S.C. § 316(a)(5); 37 C.F.R. §
`
`42.51(b)(2)(i). As the movant, Patent Owner bears the burden of establishing
`
`it is entitled to additional discovery. 37 C.F.R. § 42.20(c).
`
`Illustrative factors to be considered in determining whether a discovery
`
`request is in the interests of justice have been explained in Garmin
`
`International, Inc. v. Cuozzo Speed Technologies, LLC, Case IPR2012-00001,
`
`slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (precedential). Garmin
`
`explains that: (1) there must be more than a mere possibility of finding
`
`something useful or a mere allegation that something useful will be found; (2)
`
`a party may not seek another party’s litigation 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. Id.
`
`Whether a party is a real party-in-interest to a proceeding is a highly
`
`fact-dependent question. 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)). “Courts invoke the terms ‘real party-in-
`
`interest’ and ‘privy’ to describe relationships and considerations sufficient to
`
`justify applying conventional principles of estoppel and preclusion.” Id.
`
`Taylor lists six categories that create an exception to the common law rule that
`
`normally forbids non-party preclusion in litigation. Taylor, 553 U.S. at 893–
`
`3
`
`
`

`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9.019,838 B2)
`
`95. “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).
`
`Additional relevant factors include: the non-party’s relationship with the
`
`petitioner; the non-party’s relationship to the petition itself, including the
`
`nature and/or degree of involvement in the filing; and the nature of the entity
`
`filing the petition. Trial Practice Guide, 77 Fed. Reg. at 48,760. To prevail in
`
`its Motion for Additional Discovery concerning real parties-in-interests,
`
`Patent Owner has the burden to show its discovery requests are in the interests
`
`of justice.
`
`A. Patent Owner’s Motion and Evidence
`
`In the Motion, Patent Owner indicates it “expects” that parties other
`
`than Petitioner3 exercised or could have exercised control over these
`
`proceedings and, thus, should have been named a real party-in-interest. See,
`
`e.g., Mot. 2, 4. Patent Owner argues that evidence in its possession tends to
`
`show that: (1) indemnification agreements exist between AMX and/or Dell
`
`and third-parties (Mot. 4); (2) AMX and HP both hired the same counsel in
`
`separate cases (Mot. 3); and (3) Dell is a customer of Aerohive Networks
`
`(Mot. 5); see also Opp. 4 (categorizing Patent Owner’s evidence).
`
`B. Petitioner’s Opposition and Evidence
`
`Petitioner contends that Patent Owner’s discovery requests are not in
`
`the interests of justice. Opp. 1–2. Petitioner also asserts the necessity for
`
`discovery is premised on speculation or a “mere possibility.” Id. at 1, 3–8.
`
`Next, Petitioner contends Patent Owner has already taken discovery,
`
`
`3 Patent Owner emphasizes HP and Cisco but mentions other entities both
`named and unnamed. See Mot. 3–5.
`
`4
`
`
`

`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9.019,838 B2)
`
`specifically from AMX, which confirms that the requested discovery and is
`
`available through other means. Id. at 1, 8–9.
`
`C. Patent Owner’s Proposed Discovery Requests
`
`Patent Owner’s proposed discovery requests are submitted as Exhibit
`
`2002. Interrogatory number 1 is exemplary in asking for “any request for
`
`indemnification” made by or directed to Petitioner. Ex. 2002, Int. No. 1.
`
`Similarly, the requests for production of documents seek, for example, “[a]ll
`
`indemnity agreements” that involve any of the patents being challenged in
`
`these proceedings. Id. at Req. No. 1.
`
`D. Garmin Factors
`
`We next turn to a discussion of Patent Owner’s arguments that its
`
`discovery requests are in the interests of justice as shown by the five Garmin
`
`factors. Mot. 3–9.
`
`1. Whether Something Useful Will Be Found
`
`The first Garmin factor considers whether there exists more than a mere
`
`possibility of finding something useful or a mere allegation that something
`
`useful will be found. Garmin, slip op. 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.
`
`Patent Owner contends that the evidence in its possession “tends to
`
`show that information favorable in substantive value to Chrimar on the issue
`
`of real parties-in-interest will be uncovered by the requested discovery.” Mot.
`
`3. Specifically, Patent Owner identifies evidence indicating that Petitioner
`
`may have indemnification agreements with third parties. Mot. 3–4 (citing Ex.
`
`2005, 5; Ex. 2006, 72; Ex. 2010, 41). Patent Owner, however, does not
`
`identify any evidence suggesting that those indemnification agreements would
`
`5
`
`
`

`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9.019,838 B2)
`
`be useful in demonstrating that the third parties direct, control, or fund these
`
`proceedings. Mot. 3–5. Patent Owner also does not identify any evidence
`
`suggesting that Petitioner has requested indemnification under those
`
`agreements. Id. In other words, Patent Owner does not identify evidence
`
`tending to show that those indemnification agreements would be useful in
`
`demonstrating that there are additional real parties in interest in these
`
`proceedings.
`
`Moreover, we are not persuaded, on this record, that the existence of
`
`indemnification agreements would indicate control over these proceedings by
`
`the indemnitor. See Opp. 5 (citing Broadcom Corp. v. Telefonaktiebolaget
`
`LM Ericsson (PUBL), IPR2013-00601, slip op. at 7 (PTAB Jan. 24,
`
`2014)(Paper 23)); see also Wavemarket Inc. v. Locationet Sys. Ltd., IPR2014-
`
`00199, slip op. 34 at 6 (PTAB Aug. 11, 2014)(Paper 34) (finding
`
`indemnification obligation is not sufficient to demonstrate beyond speculation
`
`that non-party funded, controlled, or had ability to exercise control over IPR
`
`proceedings).
`
`Patent Owner also identifies evidence indicating that Petitioner is
`
`represented in these proceedings by the same counsel that represents HP in
`
`other cases involving the same patents. Mot. 3–4 (citing Ex. 2003; Ex.
`
`2004). We are not persuaded, though, that common representation adds
`
`anything beyond speculation that something useful will be uncovered
`
`regarding additional real parties in interest in these proceedings. There are
`
`many reasons for different parties to retain the same counsel. One significant
`
`reason for common representation is familiarity with the subject matter and
`
`coordination of effort, such as participation in a “Joint Defense Group.”
`
`Such coordination does not indicate control. See Opp. 6 (citing Office Patent
`
`6
`
`
`

`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9.019,838 B2)
`
`Trial Practice Guide, 77 Fed. Reg. at 48760 (“If Party A is part of a Joint
`
`Defense Group with Party B in a patent infringement suit . . . Party A is not a
`
`‘real party-in-interest’ . . . based solely on its participation in that Group.”)).
`
`Further, the language of Patent Owner’s Motion evinces speculation,
`
`rather than demonstrating Patent Owner has evidence in its possession tending
`
`to show something useful will be uncovered regarding additional real parties
`
`in interest in these proceedings. For example, Patent Owner states it “believes
`
`that Ruckus was indemnifying AMX” and that it “believes that it can show
`
`that HP, Cisco, and/or another entity is a real party-in-interest or privy.” Mot.
`
`2, 4; see Opp. 7 (citing CaptionCall, L.L.C. v. Ultratec, Inc., IPR2015-00636,
`
`slip op. at 17–18 (PTAB Feb. 23, 2016)(Paper 42)). Other positions taken by
`
`Patent Owner reinforce the speculative nature of the requested discovery, e.g.,
`
`“[i]f Petitioners are covertly acting on behalf of . . . HP or Cisco.” Mot. 6.
`
`While the use of words like “believes,” “if,” or other qualified wording
`
`evidencing opinions or possibilities do not alone lead to the conclusion that
`
`the requested discovery is speculative, some evidence needs to corroborate the
`
`suppositions. Such corroboration is lacking here.
`
`Thus, the first Garmin factor weighs against granting the Motion.
`
`2. Garmin Factors 2 and 3
`
`Patent Owner contends it is not seeking information indicative of
`
`Petitioner’s litigation positions or the underlying basis for such. Mot. 4–5.
`
`This is not disputed by Petitioner and our review of Exhibit 2002 confirms
`
`that representation. Accordingly, the second Garmin factor does not weigh
`
`for or against additional discovery.
`
`Regarding the third Garmin factor, that Patent Owner cannot generate
`
`equivalent discovery by other means, Patent Owner asserts it has no other
`
`7
`
`
`

`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9.019,838 B2)
`
`recourse and that the circumstantial evidence it provides is enough to warrant
`
`the requested discovery. Mot. 5–6 (citing Zoll Lifecor Corp. v. Philips Elec.
`
`N. Am. Corp., Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014)
`
`(Paper 15)). Petitioner argues that Patent Owner already obtained or can
`
`obtain the requested discovery through discovery requests or depositions in
`
`the related district court case. Opp. 8–9. Petitioner’s argument is not
`
`persuasive. In either case, Patent Owner must obtain the discovery by serving
`
`discovery requests on Petitioner, not by other means.
`
`Thus, the third Garmin factor weighs slightly in favor of granting the
`
`Motion.
`
`3. Garmin Factors 4 and 5
`
`Turning to the fourth Garmin factor, Patent Owner contends its
`
`instructions and questions are easily understandable. Mot. 6–7. Petitioner
`
`does not argue this factor. While this factor is favorable to Patent Owner, it is
`
`not dispositive. The other four factors must be reviewed and weighed.
`
`With respect to the fifth Garmin factor, Patent Owner contends its
`
`proposed discovery is specifically targeted and narrowly tailored. Mot. 7–8.
`
`Petitioner disagrees, noting among other things that document request number
`
`1 requests “all indemnity agreements.” Opp. 9 (citing Ex. 2002, Req. No. 1).
`
`We agree with Petitioner. Patent Owner identified several third parties
`
`by name, including HP, Cisco, Ruckus, and Aerohive (see Mot. 3–4). But
`
`Patent Owner’s proposed discovery does not specifically seek documents
`
`relating to those named parties, but rather to “all third parties,” “any third
`
`party,” “all indemnity agreements,” and “all agreements.” See Ex. 2002. We
`
`do not find the proposed discovery to be narrowly tailored to the real party-in-
`
`interest issue.
`
`8
`
`
`

`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9.019,838 B2)
`
`Thus, while the fourth Garmin factor is neutral, the fifth factor weighs
`
`against granting the Motion.
`
`4. Conclusion
`
`As discussed above, the first and fifth factors weigh against granting the
`
`Motion, the second and fourth factors are neutral, and the third factor weighs
`
`only slightly in favor of granting the Motion. After consideration of Patent
`
`Owner’s arguments and evidence in light of the Garmin factors, we determine
`
`that Patent Owner has not shown that the additional discovery is in the
`
`interests of justice. See 37 C.F.R. § 42.51(b)(2).
`
`III. MOTION TO SEAL/PROTECTIVE ORDER
`
`Petitioner filed an unopposed Motion to Seal Exhibits 1039 and 1040
`
`(Paper 14, Mot. Seal), which Exhibits are referenced in the Opposition. There
`
`is a strong public policy in favor of making information filed in an inter partes
`
`review open to the public, especially because the proceeding determines the
`
`patentability of claims in an issued patent and, therefore, affects the rights of
`
`the public. Under 35 U.S.C. § 316(a)(1) and 37 C.F.R. § 42.14, the default
`
`rule is that all papers filed in an inter partes review are open and available for
`
`access by the public; however, a party may file a concurrent motion to seal
`
`and the information at issue is sealed pending the outcome of the motion. It is
`
`only “confidential information” that is protected from disclosure. 35 U.S.C. §
`
`316(a)(7); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760
`
`(Aug. 14, 2012). The standard for granting a motion to seal is “for good
`
`cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of
`
`proof in showing entitlement to the requested relief, and must explain why the
`
`information sought to be sealed constitutes confidential information. 37
`
`C.F.R. § 42.20(c).
`
`9
`
`
`

`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9.019,838 B2)
`
`We have reviewed Exhibits 1039 and 1040. We conclude that they
`
`contain confidential business information relating to AMX’s confidential
`
`communications and business relationships with its suppliers. See Mot. Seal,
`
`1. Based on the preceding, Petitioner submits that good cause exists to seal
`
`the deposition excerpts, and request that the Board grant Petitioners’ motion to
`
`seal. None of the contents of those documents that is asserted as constituting
`
`confidential business information has been identified in this Decision in
`
`reaching a determination with respect to the Motion.
`
`Petitioner requests we enter the default protective order, attached to its
`
`Motion. Mot. Seal, 1 (Appendix A). The Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012), provides that in an inter partes
`
`review, “a document or thing will be made publicly available, unless a party
`
`files a motion to seal that is then granted by the Board.” “A party may file a
`
`motion to seal where the motion contains a proposed protective order, such as
`
`the default protective order.” Id. “The protective order governs the protection
`
`of confidential information contained in documents, discovery, or testimony
`
`adduced, exchanged, or filed with the Board.” Id. at 48,769. Confidential
`
`information is defined as “trade secret or other confidential research,
`
`development, or commercial information.” Id. at 48,760.
`
`The Motion to Seal states Patent Owner has been consulted and does
`
`not object. We are persuaded that confidential commercial information is
`
`present in at least Exhibits 1039 and 1040 and there is good cause for entry of
`
`a protective order.
`
`
`
`Accordingly, it is
`
`IV. ORDER
`
`10
`
`
`

`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9.019,838 B2)
`
`ORDERED that Patent Owner’s Motion for Additional Discovery is
`
`denied; and
`
`FURTHER ORDERED that Petitioner’s Motion to Seal is granted;
`
`FURTHER ORDERED that Petitioner’s Motion for Entry of Default
`
`Protective Order is granted;
`
`FURTHER ORDERED that the Board’s default Standing Protective
`
`Order is entered in this proceeding and effective as of the date of this Order.
`
`
`PETITIONER:
`
`Brent Hawkins
`Amol A. Parikh
`MCDERMOTT, WILL & EMERY LLP
`
`Gilbert A. Greene
`NORTON ROSE FULBRIGHT US LLP
`
`bhawkins@mwe.com
`amparikh@mwe.com
`bert.greene@nortonrosefulbright.com
`
`PATENT OWNER:
`
`Justin S. Cohen
`THOMPSON & KNIGHT LLP
`
`Richard W. Hoffman
`REISING ETHINGTON PC
`
`justin.cohen@tklaw.com
`hoffmann@reising.com
`Chrimar@tklaw.com
`
`11

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