Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 98
`Date: November 19, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VENTEX CO., LTD.,
`Petitioner,
`
`v.
`
`COLUMBIA SPORTSWEAR NORTH AMERICAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00651; Patent No. 8,424,119 B2
`Case IPR2017-00789; Patent No. 8,453,270 B21
`____________
`
`Before JOSIAH C. COCKS, MITCHELL G. WEATHERLY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`1 This Order is relevant to each of the noted proceedings. The Board
`exercises its discretion to issue a single Order for entry in each proceeding.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 98
`Date: November 19, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VENTEX CO., LTD.,
`Petitioner,
`
`v.
`
`COLUMBIA SPORTSWEAR NORTH AMERICAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00651; Patent No. 8,424,119 B2
`Case IPR2017-00789; Patent No. 8,453,270 B21
`____________
`
`Before JOSIAH C. COCKS, MITCHELL G. WEATHERLY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`1 This Order is relevant to each of the noted proceedings. The Board
`exercises its discretion to issue a single Order for entry in each proceeding.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2017-00651; Patent 8,424,119 B2
`IPR2017-00789; Patent 8,453,270 B2
`
`
`
`
`1. Introduction
`A conference call was held on November 16, 2018. Judges Cocks and
`Marschall were present for the call. Petitioner, Ventex Co., Ltd.,
`(“Ventex”), was represented by David Garr, Daniel Cho, and Peter Chen.
`Patent Owner, Columbia Sportswear North America (“Columbia”), was
`represented by Nika Aldrich, Brenna Legaard.2 Seth Sproul, counsel with
`Fish & Richardson, participated in an initial portion of the call on behalf of a
`third party, Seirus Innovative Accessories, Inc. (“Seirus”). Columbia
`requested the call to discuss matters concerning the accuracy of statements
`provided by declarant Mr. Paul Park in this proceeding in connection with a
`declaration (Ex. 1091), interrogatory responses (Ex. 2187), and deposition
`testimony (Ex. 2188).
`
`2. Discussion
`During the call, Columbia explained that throughout the course of
`these inter partes review proceedings, Mr. Park had repeatedly represented
`that a 2016 exclusivity agreement entered into by Seirus and Ventex had
`never been reduced to writing. Columbia, however, informed the panel that
`on Friday, November 9, 2018, Seirus had produced to Columbia an executed
`copy of a written agreement titled “Exclusive Manufacturing Agreement”
`made on October 21, 2016 between Seirus and Ventex. See Ex. 2189.
`Seirus had also produced e-mails between Mr. Park and a representative of
`Seirus in which Mr. Park expressed knowledge of the Exclusive
`Manufacturing Agreement. See Ex. 2190. Columbia actively is advocating
`in these proceedings that Ventex had failed to name all the real parties-in-
`
`
`2 Judge Weatherly was unavailable, and did not attend the conference call.
`2
`
`
`
`
`
`
`IPR2017-00651; Patent 8,424,119 B2
`IPR2017-00789; Patent 8,453,270 B2
`
`interest in its Petitions, and had based much of its case in that respect on the
`absence of a written document of the exclusivity agreement between Ventex
`and Seirus. Columbia, thus, urged that it has been prejudiced by the
`inaccuracies present in the record as to that written agreement, and sought to
`discuss the situation with the panel, including the possibility of additional
`discovery and sanctions.3
`During the call, Columbia’s counsel also represented that Seirus had
`permitted Ventex’s counsel to disclose all relevant documents to Ventex’s
`employees but refused to permit disclosure of the written exclusivity
`agreement, or even its existence, to employees of Columbia. As a result,
`Columba’s counsel expressed that it could not consult with its client,
`Columbia, or disclose the content to Columbia of briefing that Columbia’s
`counsel is set to file on behalf of Columbia on Monday, November 19, 2018.
`Columbia’s counsel, thus, requested leave to discuss the issue with
`Columbia, including disclosing the written exclusivity agreement to in-house
`counsel of Columbia, who have signed the proposed Protective Order that
`has been filed in this proceeding (Paper 14, Appendix A). On behalf of
`Seirus, Mr. Sproul objected to permitting Columbia’s counsel to disclose the
`written exclusivity agreement to any employee of Columbia. Mr. Sproul’s
`
`
`3 Ventex’s counsel expressed on the call that it, Ventex’s CEO, Mr. Kyung
`Chan Go, and Mr. Park had engaged in supplemental search efforts but had
`not been able to locate any copies of the exclusivity agreement that had been
`produced by Seirus, or any of the e-mails referencing that agreement by Mr.
`Park.
`
`
`3
`
`
`
`
`IPR2017-00651; Patent 8,424,119 B2
`IPR2017-00789; Patent 8,453,270 B2
`
`
`objection in-part was based the Protective Order permitting in-house counsel
`for Columbia to view material subject to that Protective Order.4
`
`A.
`The record reflects that Ventex is in possession of the “Exclusive
`
`Manufacturing Agreement,” as well as e-mails from and to Mr. Park
`referencing that agreement. Ventex represented that its briefing to be filed
`on November 19, 2018, would reference the “Exclusive Manufacturing
`Agreement” and discuss its contents. Ventex also noted that throughout
`these proceedings, although Ventex had represented that the exclusivity
`agreement was not in written form, its briefing had made reference to much
`of the content that actually was reduced to writing in the “Exclusive
`Manufacturing Agreement.” Columbia’s counsel also expressed that it’s
`briefing will discuss content of the “Exclusive Manufacturing Agreement.”
`It is untenable that Columbia be placed into a situation in which its counsel
`must submit briefing in these proceedings on Columbia’s behalf without
`opportunity for Columbia to assess and approve the content of such briefing.
`Such circumstance, in and of itself, is suitable reason that Columbia’s in-
`house counsel be made aware of the existence and content of the “Exclusive
`Manufacturing Agreement” and certain associated e-mail correspondence.
`
`Furthermore, it is curious that Ventex did not maintain copies of
`business documents, such as the “Exclusive Manufacturing Agreement”, in
`the normal course of business. Had it done so, Ventex would have been
`obligated to produce that agreement and any associated e-mails referencing
`
`
`4 On the call, Columbia’s counsel, Mr. Aldrich, expressed that he had
`provided a copy of the proposed Protective Order to Mr. Sproul prior to
`document production by Seirus.
`
`4
`
`
`
`
`
`
`IPR2017-00651; Patent 8,424,119 B2
`IPR2017-00789; Patent 8,453,270 B2
`
`that agreement as a part of these proceedings. From a perspective of
`procedural fairness, Ventex should not somehow benefit from inadequate
`record keeping.
`Accordingly, for the reasons set forth above and as requested by
`Columbia’s counsel, we authorize Columbia’s counsel to disclose the
`“Exclusive Manufacturing Agreement” (Ex. 2189), and particular e-mails
`from and to Mr. Park referencing that agreement (Ex. 2190) to Columbia’s
`in-house counsel.
`
`B.
`During the conference call, Columbia also raised issues pertaining to
`
`authorization to: (1) depose Mr. Go; (2) file a motion for additional
`discovery relating to the underlying background surrounding the “Exclusive
`Manufacturing Agreement”; and (3) file a motion for sanctions in
`connection with Columbia’s attorneys’ fees that were spent based on
`Mr. Park’s inaccurate testimony. Ventex indicated that, prior to any of the
`above-noted requested actions, it would file a corrected Declaration of
`Mr. Park that explains and corrects inaccuracies in his testimony, and also
`file a Declaration from Mr. Go explaining his knowledge of the “Exclusive
`Manufacturing Agreement.” In the event that even after such filings,
`Columbia seeks additional authorization for depositions and filings,
`Columbia should provide to the Board, via e-mail, a short bulleted list of the
`authorizations that it seeks as well as proposed page lengths and timing of
`any such briefing.
`
`
`5
`
`
`
`
`IPR2017-00651; Patent 8,424,119 B2
`IPR2017-00789; Patent 8,453,270 B2
`
`
`3. Order
`
`
`
`
`
`It is
`ORDERED that Columbia’s counsel is authorized to disclose the
`“Exclusive Manufacturing Agreement” (Ex. 2189), and particular e-mails
`from and to Mr. Park referencing that agreement (Ex. 2190) to Columbia’s
`in-house counsel; and
`FURTHER ORDERED that Ventex is authorized to file a corrected
`Declaration of Mr. Park and a Declaration of Mr. Go explaining his
`knowledge of the “Exclusive Manufacturing Agreement.”
`
`
`
`
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`
`
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`
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`
`6
`
`
`
`
`
`
`IPR2017-00651; Patent 8,424,119 B2
`IPR2017-00789; Patent 8,453,270 B2
`
`For PETITIONER:
`David Garr
`Peter Chen
`COVINGTON & BURLING LLP
`dgarr@cov.com
`pchen@cov.com
`
`
`For PATENT OWNER:
`
`Steven Prewitt
`Brenna Legaard
`SCHWABE, WILLIAMSON & WYATT, P.C.
`sprewitt@schwabe.com
`blegaard@schwabe.com
`
`
`
`
`7
`
`
`
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