Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 14
`
` Entered: November 14, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMMISSARIAT À L’ENERGIE ATOMIQUE ET AUX ENERGIES
`ALTERNATIVES,
`Petitioner,
`
`v.
`
`SILICON GENESIS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00831 (Patent 6,162,705)
`Case IPR2016-00832 (Patent 6,013,563)
`Case IPR2016-00833 (Patent 6,103,599)1
`
`____________
`
`
`
`Before JONI Y. CHANG, J. JOHN LEE, and SHEILA F. McSHANE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses issues that are substantially the same in all of these
`cases. Therefore, we exercise our discretion to issue one order to be filed in
`each case. The parties, however, are not authorized to use this style heading
`in any subsequent papers without prior authorization.
`
`
`
`
`571.272.7822
`
`
`
`
`
`
` Paper No. 14
`
` Entered: November 14, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMMISSARIAT À L’ENERGIE ATOMIQUE ET AUX ENERGIES
`ALTERNATIVES,
`Petitioner,
`
`v.
`
`SILICON GENESIS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00831 (Patent 6,162,705)
`Case IPR2016-00832 (Patent 6,013,563)
`Case IPR2016-00833 (Patent 6,103,599)1
`
`____________
`
`
`
`Before JONI Y. CHANG, J. JOHN LEE, and SHEILA F. McSHANE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses issues that are substantially the same in all of these
`cases. Therefore, we exercise our discretion to issue one order to be filed in
`each case. The parties, however, are not authorized to use this style heading
`in any subsequent papers without prior authorization.
`
`
`
`
`
`IPR2016-00831 (Patent 6,162,705)
`IPR2016-00832 (Patent 6,013,563)
`IPR2016-00833 (Patent 6,103,599)
`
`
`
`
`
`
`
`A conference was held with the parties on October 27, 2016,
`regarding the above-captioned cases (“CEA-SiGen IPRs”). At the
`conference, Patent Owner Silicon Genesis Corporation (“SiGen”) requested
`authorization to file a motion seeking discovery from Petitioner,
`Commissariat à L’Energie Atomique et aux Energies Alternatives (“CEA”),
`regarding allegedly unnamed real parties in interest. Specifically, SiGen
`seeks at least one deposition of a witness designated by CEA to testify about
`its relationship with non-party Soitec S.A. (“Soitec”), any joint defense
`agreement that may exist between CEA and Soitec, and evidence showing
`any payments made by Soitec to CEA relating to the CEA-SiGen IPRs.
`SiGen’s stated basis for seeking this discovery is that such evidence
`would be inconsistent with the position taken by CEA in its petitions in the
`CEA-SiGen IPRs that CEA is the only real party in interest to these
`proceedings. See, e.g., Commissariat à L’Energie Atomique et aux Energies
`Alternatives v. Silicon Genesis Corp., Case IPR 2016-00831, Paper 1, 1
`(PTAB Apr. 1, 2016). Thus, according to SiGen, this discovery is routine
`discovery under 37 C.F.R. § 42.51(b)(1)(iii), and SiGen asserts CEA is
`withholding such routine discovery.
`CEA opposed SiGen’s request for authorization and asserted the
`discovery SiGen seeks is neither routine discovery nor permissible
`additional discovery under 37 C.F.R. § 42.51(b)(2)(i). CEA’s counsel
`represented that CEA is not withholding any discovery that is inconsistent
`with its position that CEA is the sole real party in interest. Further, CEA
`argued SiGen has not satisfied the requirements for obtaining additional
`discovery set forth in Garmin International, Inc. v. Cuozzo Speed
`
`2
`
`
`
`
`
`
`
`IPR2016-00831 (Patent 6,162,705)
`IPR2016-00832 (Patent 6,013,563)
`IPR2016-00833 (Patent 6,103,599)
`
`
`
`Technologies, Case IPR2012-00001, slip op. at 6–16 (PTAB Mar. 5, 2013)
`(Paper 26) (precedential).
`As explained in the Office Patent Trial Practice Guide, whether a
`particular entity is a real party in interest is a “highly fact-dependent
`question” that is assessed “on a case-by-case basis.” Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (citing Taylor
`v. Sturgell, 553 U.S. 880, 893–95 (2008)). Although multiple factors may
`be relevant to the inquiry, “[a] common consideration is whether the non-
`party exercised or could have exercised control over a party’s participation
`in a proceeding.” Id.; see Zoll Lifecor Corp. v. Phillips Elec. N. Am. Corp.,
`Case IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15).
`SiGen’s basis for its belief that CEA is withholding routine discovery
`is speculative at best. SiGen relies on the following allegations:
`(1) The three patents challenged in the CEA-SiGen IPRs are
`the
`same patents asserted against Soitec
`(and
`GlobalFoundries U.S., Inc.) in pending litigation in district
`court and at the U.S. International Trade Commission.
`These patents are now challenged by CEA despite that
`CEA is not a party to that litigation, and CEA has not been
`sued for infringement of these patents.
`(2) CEA and Soitec collaborated on the development of
`Soitec’s technology that is accused of infringement in the
`litigation against Soitec, and have a business relationship
`that, at least in part, relates to that technology.
`
`Based on these allegations, SiGen asserts that CEA’s filing of the CEA-
`SiGen IPRs is “too coincidental,” concluding that Soitec must be exercising
`
`3
`
`
`
`IPR2016-00831 (Patent 6,162,705)
`IPR2016-00832 (Patent 6,013,563)
`IPR2016-00833 (Patent 6,103,599)
`
`
`
`
`
`
`
`control over the CEA-SiGen IPRs, and that Soitec may be paying for the
`CEA-SiGen IPRs as well. Even if the above allegations are true, however,
`they do not support SiGen’s speculative conclusions and do not indicate
`sufficiently that routine discovery may have been withheld.
`Being sued for infringement is not a prerequisite for filing an IPR;
`indeed, anyone who is not the owner of a patent may file a petition to
`institute an inter partes review of the patent. 35 U.S.C. § 311(a). Thus, the
`fact that CEA has not been sued for infringement does not indicate other
`parties must be controlling or paying for the CEA-SiGen IPRs. Nor does the
`fact that CEA has or had a business relationship with Soitec indicate control
`or payment. SiGen did not identify any specific reason regarding the nature
`of that relationship that reasonably would lead to such a conclusion. CEA’s
`unspecified “collaboration” or involvement in the development of Soitec’s
`technology, without more, is insufficient.
`Consequently, we determine SiGen has not presented a sufficient
`basis at this time to indicate CEA may have withheld routine discovery.
`CEA’s counsel also represented to the Board that it is not withholding any
`discovery inconsistent with its position on real parties in interest. Moreover,
`SiGen has not addressed the Garmin factors and, thus, we determine a basis
`has not been shown at this time to justify authorization for a motion for
`additional discovery. Therefore, SiGen’s request is denied.
`As an additional matter, both parties indicated during the conference
`that the parties’ attempt to resolve this dispute about discovery only
`consisted of SiGen’s e-mail requesting the discovery, and CEA’s e-mail
`refusing that request. The Board expects, however, that parties will meet
`and confer in good faith to try to resolve disputes before contacting the
`
`4
`
`
`
`IPR2016-00831 (Patent 6,162,705)
`IPR2016-00832 (Patent 6,013,563)
`IPR2016-00833 (Patent 6,103,599)
`
`
`
`Board, not merely identify that a dispute exists. The parties’ efforts here
`were inadequate. Therefore, all future requests for the Board’s intervention
`to resolve a dispute between the parties shall include an express certification
`that the parties met and conferred in good faith to try to resolve the dispute.
`
`
`
`
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that SiGen is not authorized at this time to file a motion to
`compel routine discovery;
`FURTHER ORDERED that SiGen is not authorized at this time to file
`a motion for additional discovery; and
`FURTHER ORDERED that any future request by either party for the
`Board’s intervention to resolve a dispute shall include an express
`certification that the parties met and conferred in a good faith attempt
`resolve the dispute, including the date(s) on which the parties met and
`conferred.
`
`
`5
`
`
`
`IPR2016-00831 (Patent 6,162,705)
`IPR2016-00832 (Patent 6,013,563)
`IPR2016-00833 (Patent 6,103,599)
`
`
`
`
`
`
`
`
`PETITIONER:
`Paul McGowan
`paul.mcgowan@troutmansanders.com
`
`Parker Hancock
`parker.hancock@troutmansanders.com
`
`
`PATENT OWNER:
`
`Kent Tobin
`kenjtobin@gmail.com
`
`6
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