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` Paper 24
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` Entered: May 7, 2019
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`33ACROSS, INC.,
`Petitioner,
`v.
`LEFTSNRIGHTS, INC. d/b/a LIQWID,
`Patent Owner.
`____________
`
`Case IPR2018-01480
`Patent 9,575,934 B2
`____________
`
`
`
`Before JEAN R. HOMERE, JONI Y. CHANG, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`DECISON
`Denying Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
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`IPR2018-01480
`Patent 9,575,934 B2
`
`
`I.
`INTRODUCTION
`On April 3, 2019, we directed the parties to meet and confer regarding
`Patent Owner’s proposed discovery requests. Paper 16, 2−3. We also
`granted Patent Owner’s request for authorization to file a motion for
`additional discovery under 37 C.F.R. § 42.51(b)(2) and authorized Petitioner
`to file an opposition if any disputes remain after the meet and confer. Id.
`Subsequently, Patent Owner filed a Motion for Additional Discovery
`(Paper 18, “Mot.”), Petitioner filed an Opposition to the Motion for
`Additional Discovery (Paper 21, “Opp.”), and Patent Owner filed a Reply to
`the Opposition (Paper 22, “Reply”).
`For the reasons stated below, Patent Owner’s Motion for Additional
`Discovery is denied.
`
`II. ANALYSIS
`Patent Owner seeks additional discovery pertaining to “Petitioner’s
`own statements regarding the claimed invention.” Mot. 1. In particular,
`Patent Owner requests the following:
`REQUEST NO. 1: Documents that refer to or describe
`measuring, identifying, or detecting Unused Space as innovative.
`REQUEST NO. 2: Documents that refer to or describe
`delivering, presenting, displaying, or inserting ads in Unused
`Space as innovative.
`REQUEST NO. 3: Documents that refer to or describe
`delivering, presenting, displaying, or inserting ads in Unused
`Space in response to detecting an Operation as innovative.
`REQUEST NO. 4: Documentation that refers to or describes
`identifying or detecting Unused Space.
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`IPR2018-01480
`Patent 9,575,934 B2
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`REQUEST NO. 5: Documentation that refers to or describes
`delivering or inserting ads into Unused Space.
`REQUEST NO. 6: Documentation that refers to or describes
`delivering or inserting ads into Unused Space in response to
`detecting an Operation.
`Ex. 2015, 3.
`Pursuant to the Leahy-Smith America Invents Act, Pub. L. No.
`112−29, 125 Stat. 284 (2011) (“AIA”), certain discovery is available in inter
`partes review proceedings. 35 U.S.C. § 316(a)(5); 37 C.F.R. §§ 42.51−53.
`Discovery in an inter partes review proceeding, however, is less than what is
`normally available in district court litigation, as Congress intended inter
`partes review to be a quick and cost effective alternative to litigation.
`See H. Rep. No. 112-98 at 45−48 (2011). The legislative history of the AIA
`makes clear that additional discovery should be confined to “particular
`limited situations, such as minor discovery that PTO finds to be routinely
`useful, or to discovery that is justified by the special circumstances of the
`case.” 154 Cong. Rec. S9988−89 (daily ed. Sept. 27, 2008) (statement of
`Sen. Kyl). In light of this, and given the statutory deadlines required by
`Congress for inter partes review proceedings, the Board will be conservative
`in authorizing additional discovery. See id.
`In an inter partes review proceeding, a party seeking discovery
`beyond what is permitted expressly by rule must show “that such additional
`discovery is in the interests of justice.” 35 U.S.C. § 316(a)(5)(B)
`(“discovery shall be limited to . . . what is otherwise necessary in the interest
`of justice”); 37 C.F.R. § 42.51(b)(2)(i). The Board considers various factors
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`IPR2018-01480
`Patent 9,575,934 B2
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`in determining whether additional discovery in an inter partes review is in
`the interests of justice. The factors include the following: (1) there must be
`more than a possibility and mere allegation that something useful will be
`discovered; (2) a party may not seek another’s litigation positions or the
`underlying basis for those positions; (3) a party should not seek information
`that reasonably can be generated without a discovery request;
`(4) instructions and questions should be easily understandable; and
`(5) the discovery requests must not be overly burdensome to answer.
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case No. IPR2012-00001,
`slip op. at 6−7 (PTAB Mar. 5, 2013) (Paper 26) (precedential).
`As the moving party, Patent Owner bears the burden of proving that it
`is entitled to the requested relief. 37 C.F.R. §§ 42.20(c) and 42.51(b)(2). To
`meet its burden, Patent Owner must explain with specificity the discovery
`requested and why the items corresponding to each request are in the
`interests of justice. For the reasons stated below, Patent Owner has not met
`its burden to demonstrate that the requested additional discovery is
`necessary in the interest of justice.
`
`Factor 1 – There must be more than a possibility and mere allegation that
`something useful will be discovered.
`The mere possibility of finding something useful, and mere allegation
`that something useful will be found, are insufficient. Garmin, Case
`IPR2012-00001, slip op. at 6−7 (Paper 26). “Useful” does not mean merely
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`IPR2018-01480
`Patent 9,575,934 B2
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`“relevant” or “admissible,” but rather means favorable in substantive value
`to a contention of the party moving for discovery. Id.
`In its Motion, Patent Owner argues that the requested additional
`discovery “is necessary in the interest of justice so that Petitioner’s own
`statements regarding the claimed invention can be weighed in determining
`the meaning and validity of claims 1−9 of U.S. Patent No. 9,575,934.”
`Mot. 1. As support, Patent Owner contends that Petitioner’s “in-view”
`advertisement “closely matches the qualities of ‘unused space’ as defined in
`the ’934 Patent,” and that “[s]uch descriptions are invaluable to claim
`construction” and “provide objective evidence of non-obviousness.” Id. at 2.
`Petitioner counters that nothing in Petitioner’s possession, custody or
`control responsive to Patent Owner’s discovery request will be useful for
`either claim construction or secondary considerations of non-obviousness.
`Opp. 4−5. Petitioner notes that, in the Decision on Institution, the Board
`rejected Patent Owner’s proposed construction for the claim term “unused
`space,” as it is inconsistent with the term’s plain and ordinary meaning and
`the description of the invention in the Specification. Id. at 1−2. Petitioner
`argues that the requested discovery, seeking Petitioner’s internal documents
`as extrinsic evidence, would not be relevant or useful to support Patent
`Owner’s proposed claim construction. Id. Petitioner contends that Patent
`Owner has not shown why or how such extrinsic evidence from a single
`company in the industry and dated years after the priority date of the
`challenged claims could override the plain and ordinary meaning intrinsic to
`the claims and the specification. Id. Petitioner also argues that any
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`Patent 9,575,934 B2
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`documents responsive to Patent Owner’s proposed claim construction would
`not be commensurate with the scope of the invention, would lack the
`required nexus, and would not be relevant to secondary consideration of
`non-obviousness. Id. at 3−4. We agree with Petitioner.
`Notably, Patent Owner defines “Unused Space” as used in its request
`to mean “a portion of a client display that is not being used to display
`content, as described in U.S. Patent No. 9,575,934 at col. 2, ll. 2−18,” which
`states that “unused space refers to a portion of a display that is not being
`used to display rendered ‘primary’ content.” Mot. 2; Reply 1 (citing
`Ex. 1001, 2:10−12). However, Patent Owner does not define the term
`“primary content” as used in its special definition. As noted below, Patent
`Owner has taking inconsistent positions on whether the unused spaces of a
`web page are part of the “primary content.” See Paper 5, “Prelim. Resp.”
`22−28; Reply 2−3. Therefore, the meaning of the term “primary content,”
`as used in Patent Owner’s definition, cannot be reasonably ascertained.
`See Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1251−56
`(Fed. Cir. 2008) (holding that “[e]ven if a claim term’s definition can be
`reduced to words, the claim is still indefinite if a person of ordinary skill in
`the art cannot translate the definition into meaningfully precise claim
`scope”).
`As Petitioner also notes, we decline to adopt Patent Owner’s special
`definition for the claim term “unused space” in our Decision on Institution
`(Paper 8, “Dec.”) because Patent Owner’s definition is inconsistent with the
`term’s plain and ordinary meaning, as well as the written description of the
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`Patent 9,575,934 B2
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`invention disclosed in the Specification of the ’ 934 patent. Id. at 7−12.
`Although our claim construction findings are not final at this stage of the
`proceeding, Patent Owner does not explain sufficiently why it believes
`Petitioner’s internal documents would use the term “unused space,” as
`defined by Patent Owner, when the ’934 patent does not apply Patent
`Owner’s special definition to describe its embodiments. Id.
`To support its contention, Patent Owner argues that Petitioner
`published research regarding advertisement placement in unused space,
`citing to several web pages regarding viewability and “time-in-view.”
`Mot. 3−5 (citing Exs. 2016, 2018, 2019). However, those web pages do not
`use the term “unused space,” much less using the term as defined by Patent
`Owner. Exs. 2016, 2018, 2019. Patent Owner does not explain adequately
`how viewability and “time-in-view” relate to Patent Owner’s special
`definition of “unused space.” Mot. 3−5.
`Patent Owner also avers that documents, such as an “in-view” article
`(Ex. 2013), would provide objective evidence of non-obviousness.
`Mot. 2−3. However, as Petitioner points out, the terms “in view,”
`“viewable,” or “viewability” do not appear in the claims of the ’934 patent.
`Opp. 4. Moreover, Patent Owner does not explain, in its Motion, how
`“in-view,” “viewable,” or “viewability” relates to “unused space” as defined
`by Patent Owner. Mot. 2−3. A mere allegation that the claims could
`possibly be read to cover the petitioner’s product is insufficient. There must
`be some showing of nexus to ensure that additional discovery is necessary in
`the interest or justice.
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`Patent 9,575,934 B2
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`In its Reply in support of its Motion for Additional Discovery, Patent
`Owner argues that displaying advertisements in “empty columns and other
`page spaces that aren’t otherwise used” as described in the “in-view” article
`(Ex. 2013), meets Patent Owner’s special definition for “unused space.”
`Reply 2−3. However, this argument contradicts Patent Owner’s
`patentability argument submitted in its Preliminary Response, that the claim
`term “unused space” does not include unused spaces on a web page because,
`in Patent Owner’s view, the unused spaces on a web page are part of the
`“primary” content. Prelim. Resp. 22−28.
`Notably, the “in-view” article makes clear that “[a]ll the ad units are
`kept above the fold with such formats as ‘adhesion’ ads that stay in the
`viewable window even when the page is scrolled.” Ex. 2013, 2. Patent
`Owner does not provide any explanation as to its inconsistent positions
`regarding whether the unused spaces of a web page are part of the “primary”
`content. Reply 1−3. Nor does Patent Owner explain why “unused space,”
`as defined by Patent Owner, excludes the prior art’s method that displays
`advertisements in unused spaces on a web page, but it could be read to cover
`Petitioner’s ad units that display in unused spaces on a web page. Id.
`For the foregoing reasons, Patent Owner fails to provide a threshold
`amount of evidence or reasoning tending to show beyond speculation that
`something useful will be uncovered by the requested discovery. In short,
`Patent Owner has not shown sufficiently that the first Garmin factor weighs
`in favor for granting Patent Owner’s Motion for Additional Discovery.
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`Factor 2—A party may not seek another’s litigation positions or the
`underlying basis for those positions
`Patent Owner argues that the requests (Ex. 2015) seek a narrow band
`of documents that address the subject of “unused space” as defined by Patent
`Owner’s special definition. Mot. 3. However, as noted in our discussions
`for Factor 1 above and for Factor 5 below, we do not agree with Patent
`Owner’s characterization that its additional discovery requests are narrow.
`And the meaning of the term “primary content,” as used in Patent Owner’s
`special definition, cannot be reasonably ascertained.
`In addition, as Petitioner notes, Requests 4−6 are directed at
`Petitioner’s development of its own products and services that Patent Owner
`has accused of infringement. Opp. 5−6. Patent Owner does not explain
`adequately why such discovery requests are appropriate in this inter partes
`review that determines the patentability of the challenged claims, not
`infringement. Mot. 3. As Petitioner also notes, the parties agreed to stay the
`district court litigation, including staying all discovery. We agree with
`Petitioner that it would not be in the interests of justice to permit Patent
`Owner to use this review to conduct discovery otherwise cannot currently
`seek in district court.
`Therefore, Patent Owner has not shown sufficiently that the second
`Garmin factor weighs in favor for granting Patent Owner’s Motion for
`Additional Discovery.
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`Patent 9,575,934 B2
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`Factor 3—A party should not seek information that reasonably can be
`generated without a discovery request.
`Discovery of information a party reasonably can figure out, generate,
`obtain, or assemble without a discovery request would not be in the interest
`of justice. Garmin, Case IPR2012-00001, slip op. at 6−7 (Paper 26).
`Here, Patent Owner argues that it cannot generate equivalent
`information by other means because Petitioner’s viewability and
`“time-in-view” analysis (Exs. 2008, 2013, 2016, 2018, 2019) is no longer
`available on Petitioner’s web site. Mot. 3−5; Reply 3. Petitioner counters
`that Patent Owner has already demonstrated that it can generate equivalent
`information by other means. Opp. 6−8. We agree with Petitioner.
`Patent Owner does not explain why it genuinely need more than the
`information that it already has obtained from public sources or from
`Petitioner. See, e.g., Exs. 1023−1025, 2008, 2013, 2016, 2018, 2019. Nor
`does Patent Owner explain why it did not make clear that it was seeking the
`viewability and “time-in-view” information during the parties’ conference.
`Opp. 6 n.1 (Petitioner notes that “Patent Owner’s motion was its first notice
`to Petitioner that this analysis was of interest; if Patent Owner had asked,
`Petitioner would have provided it”).
`Furthermore, even if the requested information is no longer on
`Petitioner’s web site, Patent Owner does not explain why it could not have
`obtained the requested documents through other public sources, such as the
`Wayback Machine or the Internet Archive. Cf. Market-Alerts Pty. Ltd. v.
`Bloomberg Finance L.P., 922 F. Supp. 2d 486, 493, n.12 (D. Del. 2013)
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`(citing Keystone Retaining Wall Sys., Inc. v. Basalite Concrete Prods., LLC,
`2011 WL 6436210, *9 n.9 (D.Minn. 2011)) (Documents generated by a
`website called the Wayback Machine have been accepted generally as
`evidence of prior art in the patent context.); U.S. v. Bansal, 663 F.3d 634,
`667-68 (3d. Cir. 2011) (Screenshot images from the Internet Archive can be
`authenticated under Federal Rule of Evidence 901(b)(1) by a witness with
`personal knowledge of its contents).
`For the foregoing reasons, Patent Owner has not shown sufficiently
`that the third Garmin factor weighs in favor for granting Patent Owner’s
`Motion for Additional Discovery.
`
`Factor 4—Instructions and questions should be easily understandable
`Patent Owner argues that its additional discovery requests are
`“simple” and “further simplified” with redlines. Mot. 5. However, we do
`not agree with Patent Owner’s characterization that its requests are “simple”
`or “simplified.” Each of its requests is seeking documents mentioning
`“unused space.” Ex. 2015, 3. Patent Owner defines the term “unused
`space” as “a portion of the display not being used to present primary
`content.” Mot. 2; Reply 1. As discussed above, Patent Owner does not
`define the term “primary content.” See generally Mot.; Reply. More
`significantly, Patent Owner has taking inconsistent positions on whether the
`unused spaces of a web page are part of the “primary content.” See Prelim.
`Resp. 22−28; Reply 2−3. Therefore, the meaning of the term “primary
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`content,” as used in Patent Owner’s definition, cannot be reasonably
`ascertained.
`As such, Patent Owner has not shown sufficiently that the fourth
`Garmin factor weighs in favor for granting Patent Owner’s Motion for
`Additional Discovery.
`
`Factor 5 –The discovery requests must not be overly burdensome to answer.
`The requests must not be overly burdensome to answer. Garmin,
`Case IPR2012-00001, slip op. at 6−7 (Paper 26). The burden includes
`financial burden, burden on human resources, and burden on meeting the
`time schedule of the inter partes review. Id. Requests should be sensible
`and responsibly tailored according to a genuine need. Id.
`Patent Owner argues that its additional discovery requests are tailored
`for Petitioner’s research or analysis that describes “unused space” as
`innovative. Mot. 6. Patent Owner also avers that the requests are narrowly
`tailored “to bring to light Petitioner’s materials for educating POSAs
`regarding the valued methods described in Exhibit 2013, which also match
`[Patent Owner’s] construction of ‘unused space.’” Reply 3. Patent Owner
`further contends that it does not seek documents regarding “viewability” as
`per industry standards. Id.
`However, we agree with Petitioner that Patent Owner’s requested
`discovery is unreasonably burdensome for several reasons: (1) the requests
`are unbounded as to time; (2) the requests appear to seek all documents
`mentioning “unused space” and the like; (3) the requests would require
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`Patent 9,575,934 B2
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`Petitioner to locate candidate documents by a search of its infrastructure or
`document repositories, and then manually or mentally evaluate each of those
`candidates to decide whether or not it describes the respective behavior or
`activity as “innovative,” and whether or not it meets Patent Owner’s special
`definition for the term “unused space.” Opp. 8. As Petitioner notes, this
`would place an undue burden on Petitioner’s personnel.
`For the foregoing reasons, we determine that Patent Owner’s requests
`are unduly burdensome to answer. In short, Patent Owner has not shown
`sufficiently that the fifth Garmin factor weighs in favor for granting Patent
`Owner’s Motion for Additional Discovery.
`
`III. CONCLUSION
`Upon review of the parties’ arguments and supporting evidence, we
`determine that Patent Owner has not met its burden in showing that the
`requested additional discovery is necessary in the interest of justice.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s Motion for Additional Discovery is
`denied.
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`IPR2018-01480
`Patent 9,575,934 B2
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`For PETITIONER:
`Ce Li
`David Simson
`GOODWIN PROCTER LLP
`cli@goodwinlaw.com
`dsimson@goodwinlaw.com
`
`For PATENT OWNER:
`Elliott Williams
`Joshua Gigger
`STOEL RIVES LLP
`elliott.williams@stoel.com
`josh.gigger@stoel.com
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