Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 30
`Entered: June 20, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01257 (Patent 8,552,978 B2)
` Case IPR2018-01258 (Patent 8,441,438 B2)1
`____________
`
`
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Motions for Additional Discovery
`37 C.F.R. §§ 42.5, 42.51(b)(2)
`
`
`
`
`1 The parties are not authorized to use this style of caption.
`
`
`571-272-7822
`
`
`
`
`
`Paper 30
`Entered: June 20, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01257 (Patent 8,552,978 B2)
` Case IPR2018-01258 (Patent 8,441,438 B2)1
`____________
`
`
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Motions for Additional Discovery
`37 C.F.R. §§ 42.5, 42.51(b)(2)
`
`
`
`
`1 The parties are not authorized to use this style of caption.
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`
`I. INTRODUCTION
`In each of these proceedings, pursuant to our authorization, Patent
`Owner filed a Motion for Additional Discovery, Petitioner opposed, and
`Patent Owner replied. Papers 24 (“Mot.”), 26 (“Opp.”), 27 (“Reply”). 2
`Patent Owner “seeks discovery directed to Petitioner Google LLC’s
`(‘Petitioner’ or ‘Google’) failure to name all Real Parties in Interest
`[(“RPIs”)] to its Petition (Paper 1) in the present IPR, including at least
`Samsung Electronics Group, Ltd. (‘Samsung’), LG Electronics Inc. (‘LG’),
`and ZTE (USA), Inc. (‘ZTE’).” Mot. 1. According to Patent Owner, it
`“raised concerns of RPI in its oppositions to the joinder petitions filed by
`Samsung, LG, ZTE, and Huawei (collectively, the ‘Joinder Petitioners’)” in
`related proceedings IPR2019-00525, IPR2019-00526, IPR2019-00534,
`IPR2019-00535, IPR2019-00559, IPR2019-00560, IPR2019-00563, and
`IPR2019-00563. Id. In light of the Board’s recent designation of Ventex
`Co., Ltd. v. Columbia Sportswear N.A, Inc., Case IPR2017-00651, slip op.
`(PTAB Jan. 24, 2019) (Paper 148) as precedential, Patent Owner now seeks
`“additional discovery and briefing on the issue of RPI” in the instant
`proceedings. Id. at 2.
`
`
`II. BACKGROUND
`Almost a year ago, on July 9, 2018, the Federal Circuit provided
`guidance regarding the term “real party in interest” in the context of post-
`grant proceedings before the Office. Applications in Internet Time, LLC v.
`
`
`2 The papers filed by both parties are substantially identical in the two
`proceedings. Accordingly, we address both motions herein, but for
`convenience cite only to IPR2018-01257.
`
`2
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`RPX Corp., 897 F.3d 1336, 1344 (Fed. Cir. 2018) (“This court has had little
`occasion to grapple with the meaning of the term ‘real party in interest’ in
`the context of [35 U.S.C.] § 315(b).”). In a decision issued on January 24,
`2019, a panel of the Board applied that guidance in Ventex to find that an
`unnamed party, namely Seirus Innovative Accessories (“Seirus”), was both a
`real party in interest and in privity with the petitioner, Ventex Co. Ltd.
`(“Ventex”). Ventex, slip op. at 11 (“Based on the record before us, we
`determine Seirus is a real party in interest.”), 15 (“[W]e conclude that the
`preexisting contractual relationships between Seirus and Ventex, and
`Ventex’s role as a proxy for Seirus in these inter partes reviews, supports
`the conclusion that Seirus is in privity with Ventex.”). Ventex was
`designated as precedential by the Board on April 16, 2019.
`Ventex involved two agreements between Ventex and Seirus, namely
`a “Supplier Agreement” that included an indemnification clause and an
`“Exclusive Manufacturing Arrangement” in which Ventex agreed only to
`manufacture “Heatwave Material” for Seirus. Ventex, slip op. at 7–8. In
`light of these agreements, the Board found that Ventex and Seirus “had
`mutual interest in the continuing commercial and financial success of each
`other.” Id. at 8. Considering that interest in combination with admissions
`that Ventex filed its petition “in concern of potential legal jeopardy for ‘its
`customers’ and ‘prospective buyers,’” the Board concluded that Seirus was a
`real party in interest. Id. at 8–11. As the Board noted, when Ventex filed its
`petition, Seirus had been sued for infringement by the patent owner and was
`itself time-barred from filing its own petition under 35 U.S.C. § 315(b). Id.
`at 8–9. In addition, the Board concluded that Ventex and Seirus were privies
`in light of the legal relationship created by the two agreements between them
`
`3
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`and in light of a finding that Ventex served as a proxy for Seirus in the inter
`partes review proceeding. Id. at 11–15.
`Patent Owner contends that similar facts are present in the instant
`proceedings. Mot. 6. In particular, Patent Owner contends that Petitioner
`“has had a long, established business relationship with each of the Joinder
`Petitioners since as early as 2009 as the supplier of the Android [operating
`system].” Id. According to Patent Owner, the Android operating system is
`“a significant component” of its infringement claims against each of those
`parties in district court. Id. In addition, Patent Owner alleges that at least
`some of the Joinder Petitioners “are currently or have been parties to
`agreements with [Petitioner] relating to Android.” Id. Patent Owner
`specifically identifies the “Android Networked Cross-License” (“PAX”),
`which Patent Owner contends “creates a defense group for [Petitioner] and
`members of the ‘Android Ecosystem.’” Id. (citing Ex. 2016). Patent Owner
`also identifies the “Mobile Application Distribution Agreement” (“MADA”)
`between Samsung and Petitioner. Id. Patent Owner acknowledges that the
`MADA has not been in force since 2012, but contends that its inclusion of
`an indemnification provision “suggests the presence of other indemnification
`agreements between [Petitioner] and the Joinder Petitioners relating to
`Android devices.” Id.
`Tying these facts to Ventex, Patent Owner asserts that “Google
`appears to be the exclusive supplier of [the Android operating system] to the
`Joinder Petitioners, as all of their infringing smartphones utilize Android.”
`Id. at 7. Patent Owner also observes that Petitioner was aware of Patent
`Owner’s infringement suits against the Joinder Petitioners “as of the time it
`filed its Petition because it identified those cases as ‘Related Matters’ in its
`
`4
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`disclosure of mandatory notice information.” Id. (citing Paper 1, 5–6).
`Patent Owner summarizes: “These facts, taken together, indicate that the
`Joinder Petitioners have considerable common interests in Google’s efforts
`to invalidate the patent[s]-at-issue in th[ese] IPR[s] and are RPIs to the
`IPR[s], warranting additional discovery on the matter.” Id. (citing Ventex,
`slip op. at 9).
`
`
`III. ANALYSIS
`With respect to the threshold issue of whether to authorize additional
`discovery, the fruit of which would underlie further briefing regarding a
`purported failure by Petitioner to have identified all real parties in interest,
`Patent Owner seeks:
`(1) agreements between Google and any of the Joinder
`Petitioners relating to the Android Operating System (“OS”)
`and/or devices utilizing Android, including any licensing, cross-
`licensing, supplier, manufacturing, joint defense, joint interest,
`and indemnification agreements; (2) any communications
`between Google and any of the Joinder Petitioners regarding the
`Google IPRs, CyWee, U.S. Patents 8,441,438 and 8,552,978,
`and/or any of the “Related Matters” disclosed in Google’s
`Petition (Paper 1 at 5-6); and (3) deposition of witness(es) with
`knowledge of Google’s Android licensing practices and any of
`the agreements listed above.
`
`Id. In opposing the Motion, Petitioner contends that the Motion is untimely,
`and that the requests are both too broad and unlikely to produce anything
`useful. Opp. 1–10. We deny the Motion in both proceedings for the
`following reasons.
`A party moving for additional discovery “must show that such
`additional discovery is in the interests of justice.” 37 C.F.R. § 42.51(b)(2).
`
`5
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`The Board has identified factors important in determining whether a request
`for additional discovery meets the standard of being “in the interest of
`justice” as: (1) more than a possibility and mere allegation that something
`useful will be discovered; (2) requests that do not seek the other party’s
`litigation positions and the underlying basis for those positions; (3) ability to
`generate equivalent information by other means; (4) easily understandable
`instructions; and (5) requests that are not overly burdensome to answer.
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case No. IPR2012-00001,
`Paper 26, 6–7 (PTAB, Mar. 5, 2013). In authorizing Patent Owner’s
`Motion, we specifically advised the parties that “Patent Owner should
`address the[se] factors,” and it does so in its Motion. Mot. 8–10. As we
`discuss below, the fourth and fifth factors weigh especially heavily against
`authorizing additional discovery. In addition, we agree with Petitioner that
`the untimeliness of Patent Owner’s request further weighs against
`authorizing additional discovery.
`The first factor, which requires “more than a possibility and mere
`allegation that something useful will be discovered” does not weigh
`significantly in either party’s favor. Although we generally agree with
`Petitioner’s contention that the existence of the PAX and MADA
`agreements tends to suggest that other useful communications might be
`discovered, that contention is mitigated by the Board’s prior evaluation of
`the relationship and relevant agreements between Petitioner and Samsung
`with respect to Android. Mot. 9; see Samsung Electronics Co., Ltd. v. Seven
`Networks, LLC, Case IPR2018-01108, slip op. at 11 (PTAB Jan. 24, 2019)
`(Paper 31) (“the evidence shows that Samsung and Google have a standard
`customer-supplier relationship, which by itself does not make Samsung an
`
`6
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`RPI”); Google LLC v. Seven Networks, LLC, Case IPR2018-01116, slip op.
`at 17–18 (PTAB Feb. 25, 2019) (Paper 36) (same). While Patent Owner
`suggests that the relationship between Google and Samsung in the prior
`cases could be different from their relationship in this case, Patent Owner
`offers no specific evidence of this. Reply 3.
`In this context, we also note our agreement with Petitioner that “the
`designation of Ventex as precedential did not change the relevant law”
`because it clearly followed the Federal Circuit’s decision in Applications in
`Internet Time. Opp. 2. In this respect, we find inaccurate Patent Owner’s
`characterization of Ventex as “clarif[ying] that the Board would now accept
`as evidence of an RPI relationship certain types of facts that it had
`previously declined to consider, such as indemnification agreements.”
`Mot. 3. The Board has always considered the evaluation of whether third
`parties are real parties in interest or privies of the parties to a proceeding to
`be a “highly fact-dependent question,” and has, when warranted, considered
`indemnification as a component of that evaluation. See Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (explaining
`that whether a non-party is a “real party-in-interest” for purposes of an inter
`partes review proceeding is a “highly fact-dependent question” that takes
`into account how courts generally have used the term to “describe
`relationships and considerations sufficient to justify applying conventional
`principles of estoppel and preclusion”). Patent Owner’s characterization of
`Ventex also places inappropriate weight on the importance of
`indemnification even in that case, which focused more expansively on the
`parties’ relationship as “specially structured, preexisting, and well
`
`7
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`established,” including exclusivity arrangements in addition to
`indemnification arrangements. Ventex, slip op. at 10.
`The second and third factors, i.e. whether litigation positions are
`sought and the ability to generate equivalent information by other means,
`weigh in Patent Owner’s favor. As Patent Owner asserts, its requested
`discovery “does not pertain to [Petitioner]’s litigation positions, only to its
`relationships with the Joinder Petitioners.” Mot. 9. And Patent Owner
`represents that “[a]ll of the related district court actions have now been
`stayed,” so that it “can no longer use those cases as an avenue for generating
`the information by other means.” Id. at 10. Petitioner does not dispute these
`assertions.
`The fourth and fifth factors, i.e. understandability of instructions and
`degree of burden to answer, weigh heavily against Patent Owner—and
`define our principal concern with Patent Owner’s Motion.
`Consistent with Congressional intent that inter partes review be a
`quick and cost-effective alternative to litigation, discovery in inter partes
`review is less expansive that that typically available in district-court patent
`litigation. Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-
`00001, slip op. at 5 (Mar. 5, 2013) (Paper 26). The legislative history of the
`Leahy-Smith America Invents Act makes clear that additional discovery
`should be confined to “particular limited situations, such as minor discovery
`that [the Office] finds to be routinely useful, or to discovery that is justified
`by the special circumstances of the case.” 154 Cong. Rec. S9982, S9988
`(daily ed. Sept. 27, 2008) (statement of Sen. Kyl). “Given the time
`deadlines imposed on these proceedings, it is anticipated that . . . [the Office]
`will be conservative in its grants of discovery.” Id. at S9988–S9989.
`
`8
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`
`We agree with Petitioner that Patent Owner’s Motion “makes
`litigation-style requests for broad categories of documents.” Opp. 6. Patent
`Owner appears to agree: “Patent Owner proposed categories in its Motion,
`not specific requests.” Reply 3 (emphases added). For example, Patent
`Owner “agrees to keep its requests clear to allow [Petitioner] to respond
`efficiently, accurately, and confidently,” but has not defined what those
`specific requests are. Mot. 10 (emphasis added). By deferring identification
`of its specific requests, Patent Owner both deprives Petitioner a full
`opportunity to address such specific requests in its Opposition and renders it
`impossible for us to evaluate whether they would comport with the limited
`nature of additional discovery in inter partes reviews.
`In addition to these considerations, we agree with Petitioner that
`Patent Owner’s request is untimely, and that Patent Owner has articulated
`insufficient reason to excuse the untimeliness. See Opp. 1–6. Patent Owner
`relies heavily on the date that Ventex was designated as precedential to
`support its timeliness argument: “Upon reviewing Ventex, Patent Owner
`revisited the RPI issue in light of the close parallels between the facts of that
`case to those in the present matter.” Mot. 3 (emphasis added). But as we
`explain above, we disagree that the parallels are as tight as Patent Owner
`suggests.
`The Federal Circuit’s decision in Applications in Internet Time—of
`which Ventex provides an example of the Board’s application—was
`rendered some eight months before Patent Owner filed its Responses in
`these proceedings, Paper 14. We agree with Petitioner that “[i]f [Patent
`Owner] believed that an RPI was not properly named, it should have made a
`case during those eight months, rather than waiting well into [Petitioner’s]
`
`9
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`reply period.” Opp. 2–3. We are not persuaded that Ventex so altered the
`Board’s application of the law as expressed by the Federal Circuit in
`Applications in Internet Time to justify the delay in raising the issue.
`For these reasons, we conclude that Patent Owner has not carried its
`burden of showing that the additional discovery it requests is in the interests
`of justice.
`Accordingly, it is
`ORDERED that Patent Owner’s Motions for Additional Discovery are
`denied in both proceedings.
`
`
`10
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`PETITIONER:
`
`Matthew A. Smith
`Andrew S. Baluch
`SMITH BALUCH LLP
`smith@smithbaluch.com
`baluch@smithbaluch.com
`
`PATENT OWNER:
`
`Jay P. Kesan
`Cecil E. Key
`DIMURO GINSBERG PC-DGKEYIP GROUP
`jkesan@dimuro.com
`ckey@dimuro.com
`
`Ari Rafilson
`SHORE CHAN DEPUMPO LLP
`arafilson@shorechan.com
`
`
`11
`
`
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