`Tel: 571-272-7822
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`Paper 14
`Entered: April 30, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`QUALCOMM INC.,
`Patent Owner.
`
`Case IPR2018-01283
`Case IPR2018-01452
`Patent 7,834,591 B21
`
`
`
`
`Before TREVOR M. JEFFERSON, DANIEL J. GALLIGAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`JEFFERSON, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding, Compelling Testimony and Production
`37 C.F.R. §§ 42.5, 42.52
`
`
`1 This Order applies to both listed cases. The parties may not use this style
`heading unless authorized.
`
`
`
`
`
`Case IPR2018-01283
`Case IPR2018-01452
`Patent 7,834,591 B2
`
`
`
`
`Petitioner filed an authorized “Motion Under 37 C.F.R. § 42.52(a) to
`Apply for Subpoena Under 35 U.S.C. § 24 to Compel Production of
`Documents and Testimony from Analog Devices, Inc.” on April 19, 2018 in
`IPR2018-01283 and IPR2018-01452. Paper 11.2 In both cases, Petitioner
`seeks authorization to file a subpoena to compel the production of
`documents and testimony of third party Analog Devices, Inc. related to
`Exhibit 1007.3 Id. at 1–2. Petitioner’s motion addresses the factors set forth
`for such discovery in in Garmin International, Inc. v. Cuozzo Speed
`Technologies LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5,
`2013) (Paper 26). Id. at 2–4. The motion also includes as an attachment a
`copy of the subpoena and requested discovery from the third party. Id. at
`Appendix 1.
`Patent Owner informed the Board by email on April 26, 2019, that
`“the parties have conferred and Petitioner has agreed to work with Patent
`Owner to coordinate the timing of the depositions sought [via third-party
`subpoena]. In view of that agreement, Patent Owner has elected not to
`oppose [Petitioner’s] motions.” Ex. 3001 (April 26, 2019 email to Board).
`Thus, Petitioner’s motion is unopposed.
`A party moving for subpoena “must show that such additional
`discovery is in the interests of justice.” 37 C.F.R. § 42.51(b)(2). The Board
`
`
`2 Similar papers and exhibits having the same numbering were filed in the
`two subject cases. For clarity and expediency, references to paper or exhibit
`numbers apply to both IPR2018-01283 and IPR2018-01452, unless
`indicated otherwise.
`3 Walt Kester, Ed., Practical Design Techniques for Power and Thermal
`Management, Analog DEVICES, 1998 (Ex. 1007).
`
`2
`
`
`
`
`
`Case IPR2018-01283
`Case IPR2018-01452
`Patent 7,834,591 B2
`
`has identified factors important in determining whether an additional
`discovery request meets the standard of being “in the interest of justice.”
`Garmin International, Inc., Case IPR2012-00001, slip op. at 6–7. Having
`reviewed Petitioner’s request and arguments, we find that Garmin factors
`weigh in favor of allowing the discovery. Paper 11, 2–4. Petitioner has also
`shown reasonable efforts to obtain the production and testimony from
`Analog Devices, Inc. Id. at 1–2. In light of the parties’ agreement, Patent
`Owner’s election not to oppose Petitioner’s motion (Ex. 3001), and
`Petitioner’s arguments, we grant the requested subpoena.
`It is
`ORDERED that Petitioner’s Motion Under 37 C.F.R. § 42.52(a) to
`Apply for Subpoena Under 35 U.S.C. § 24 to Compel Production of
`Documents and Testimony from Analog Devices, Inc. is granted;
`FURTHER ORDERED that Petitioner is authorized under 35 U.S.C.
`§ 24 to apply for a subpoena from the Clerk of the United States court for
`the district where testimony of Analog Devices, Inc. is to be taken.
`
`
`
`3
`
`
`
`
`
`Case IPR2018-01283
`Case IPR2018-01452
`Patent 7,834,591 B2
`
`PETITIONER:
`
`Walter Renner
`Thomas Rozylowicz
`Timothy Riffe
`FISH & RICHARDSON P.C.
`IPR39521-0041IP1@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`rozylowicz@fr.com
`tar@fr.com
`riffe@fr.com
`
`
`PATENT OWNER:
`
`Eagle Robinson
`Ross Viguet
`NORTON ROSE FULBRIGHT US LLP
`eagle.robinson@nortonrosefulbright.com
`ross.viguet@nortonrosefulbright.com
`
`
`4
`
`
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