throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 9
`Entered: August 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`_______________
`
`IPR2018-01106 (Patent 9,516,127) IPR2018-01108 (Patent 9,516,127)
`IPR2018-01113 (Patent 8,811,952) IPR2018-01114 (Patent 8,811,952)
`IPR2018-01120 (Patent 9,247,019) IPR2018-01122 (Patent 9,325,600)
`IPR2018-01124 (Patent 9,351,254) IPR2018-01125 (Patent 9,351,254)
` IPR2018-01126 (Patent 9,516,129) IPR2018-01127 (Patent 9,553,816)1
`____________
`
`
`Before THU A. DANG, KARL D. EASTHOM, JONI Y. CHANG,
`THOMAS L. GIANNETTI, ROBERT J. WEINSCHENK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.2
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`ORDER
`Authorizing Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The parties
`are not authorized to use this heading style in any subsequent papers.
`2 This is not an expanded panel of the Board. It is a listing of all the Judges
`on the panels of the above-listed proceedings.
`
`

`

`IPR2018-01106 (Patent 9,516,127) IPR2018-01108 (Patent 9,516,127)
`IPR2018-01113 (Patent 8,811,952) IPR2018-01114 (Patent 8,811,952)
`IPR2018-01120 (Patent 9,247,019) IPR2018-01122 (Patent 9,325,600)
`IPR2018-01124 (Patent 9,351,254) IPR2018-01125 (Patent 9,351,254)
`IPR2018-01126 (Patent 9,516,129) IPR2018-01127 (Patent 9,553,816)
`
`
`I.
`INTRODUCTION
`On August 24, 2018, Judges Dang, Easthom, Chang, Giannetti,
`Weinschenk, and Harlow held a telephone conference call with counsel for
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`(“Petitioner”) and counsel for SEVEN Networks, LLC (“Patent Owner”). A
`court reporter was present on the conference call. This order summarizes
`statements made during the conference call. A more complete record may
`be found in the court reporter’s transcript, which Patent Owner filed as an
`exhibit. Ex. 2002.3
`
`II. ANALYSIS
`Patent Owner requested authorization to file a motion for additional
`discovery relating to whether Google LLC (“Google”) is a real party in
`interest or privy of Petitioner. Patent Owner argued that Google was served
`with a complaint alleging infringement of the challenged patents more than a
`year before the petitions were filed in the above-listed proceedings. Thus,
`according to Patent Owner, if Google is a real party in interest or privy of
`Petitioner, the petitions in the above-listed proceedings are barred under 35
`U.S.C. § 315(b). Patent Owner asserted that Petitioner and Google have
`entered into indemnification agreements in the past and that Petitioner and
`Google currently are cooperating in the related district court cases. Patent
`Owner relied on those assertions as tending to show that the requested
`discovery will uncover something useful. Petitioner responded that Patent
`Owner’s request is based on speculation and that Patent Owner’s assertions
`
`3 We cite to the record in IPR2018-01106, unless otherwise noted.
`
`2
`
`

`

`IPR2018-01106 (Patent 9,516,127) IPR2018-01108 (Patent 9,516,127)
`IPR2018-01113 (Patent 8,811,952) IPR2018-01114 (Patent 8,811,952)
`IPR2018-01120 (Patent 9,247,019) IPR2018-01122 (Patent 9,325,600)
`IPR2018-01124 (Patent 9,351,254) IPR2018-01125 (Patent 9,351,254)
`IPR2018-01126 (Patent 9,516,129) IPR2018-01127 (Patent 9,553,816)
`
`at most indicate that Petitioner and Google have a typical customer-supplier
`relationship.
`After considering the respective positions of the parties, we direct the
`parties to meet and confer regarding Patent Owner’s proposed discovery
`requests by September 7, 2018. At least three (3) business days prior to the
`meet and confer, Patent Owner must provide Petitioner with the proposed
`discovery requests. If the parties reach an agreement regarding the proposed
`discovery requests and motion practice is not necessary, the parties should
`inform the Board by a joint email to Trials@uspto.gov.
`On the other hand, if any disputes remain after the meet and confer,
`we authorize Patent Owner to file a 10-page motion for additional discovery
`by September 11, 2018. Patent Owner should identify in the motion any
`agreements reached by the parties during the meet and confer, as well as the
`remaining disputes. Patent Owner also should identify the exact discovery
`requests that Patent Owner proposes serving on Petitioner. Patent Owner
`should explain why the requested discovery is necessary in the interest of
`justice, including by identifying the evidence already in Patent Owner’s
`possession tending to show beyond speculation that something useful will be
`uncovered by the requested discovery. Patent Owner is reminded that the
`proposed discovery requests should be reasonable in number and narrowly
`tailored. We also authorize Petitioner to file a 10-page opposition to Patent
`Owner’s motion by September 18, 2018, and Patent Owner to file a 3-page
`reply to Petitioner’s opposition by September 21, 2018.
`
`3
`
`

`

`IPR2018-01106 (Patent 9,516,127) IPR2018-01108 (Patent 9,516,127)
`IPR2018-01113 (Patent 8,811,952) IPR2018-01114 (Patent 8,811,952)
`IPR2018-01120 (Patent 9,247,019) IPR2018-01122 (Patent 9,325,600)
`IPR2018-01124 (Patent 9,351,254) IPR2018-01125 (Patent 9,351,254)
`IPR2018-01126 (Patent 9,516,129) IPR2018-01127 (Patent 9,553,816)
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that the parties must meet and confer regarding Patent
`Owner’s proposed discovery requests by September 7, 2018;
`FURTHER ORDERED that at least three (3) business days prior to
`the meet and confer, Patent Owner must provide Petitioner with the
`proposed discovery requests;
`FURTHER ORDERED that if agreement is not reached as a result of
`the meet and confer, Patent Owner is authorized to file a 10-page motion for
`additional discovery by September 11, 2018;
`FURTHER ORDERED that Petitioner is authorized to file a 10-page
`opposition to Patent Owner’s motion by September 18, 2018; and
`FURTHER ORDERED that Patent Owner is authorized to file a
`3-page reply to Petitioner’s opposition by September 21, 2018.
`
`
`
`4
`
`

`

`IPR2018-01106 (Patent 9,516,127) IPR2018-01108 (Patent 9,516,127)
`IPR2018-01113 (Patent 8,811,952) IPR2018-01114 (Patent 8,811,952)
`IPR2018-01120 (Patent 9,247,019) IPR2018-01122 (Patent 9,325,600)
`IPR2018-01124 (Patent 9,351,254) IPR2018-01125 (Patent 9,351,254)
`IPR2018-01126 (Patent 9,516,129) IPR2018-01127 (Patent 9,553,816)
`
`PETITIONER:
`
`W. Karl Renner
`Jeremy Monaldo
`Roberto Devoto
`Kim Leung
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`devoto@fr.com
`leung@fr.com
`
`
`PATENT OWNER:
`
`Kenneth J. Weatherwax
`Nathan Lowenstein
`Edward Hsieh
`Parham Hendifar
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`hsieh@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`
`
`5
`
`

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