Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 6
`Filed: January 31, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARM LIMITED AND ARM, INC.,
`Petitioner,
`
`v.
`
`COMPLEX MEMORY, LLC,
`Patent Owner.
`
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)1
`
`
`
`Before KARL D. EASTHOM, DENISE M. POTHIER, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`POTHIER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`1 This Order issues in both cases as it addresses an identical issue in each
`case. The parties, however, must seek prior authorization to use this heading
`style for any subsequent papers. For simplicity, we refer to the papers
`submitted in IPR2019-00053 in this Order.
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 6
`Filed: January 31, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARM LIMITED AND ARM, INC.,
`Petitioner,
`
`v.
`
`COMPLEX MEMORY, LLC,
`Patent Owner.
`
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)1
`
`
`
`Before KARL D. EASTHOM, DENISE M. POTHIER, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`POTHIER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`1 This Order issues in both cases as it addresses an identical issue in each
`case. The parties, however, must seek prior authorization to use this heading
`style for any subsequent papers. For simplicity, we refer to the papers
`submitted in IPR2019-00053 in this Order.
`
`
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)
`
`
`
`I. BACKGROUND
`
`On October 12, 2018, Petitioner, ARM Ltd and ARM, Inc. (“ARM”),
`
`filed two Petitions, requesting inter partes review of certain claims of U.S.
`
`Patent Nos. 5,890,195 and 6,658,576. IPR2019-00053, Paper 2; IPR2019-
`
`00058, Paper 2.
`
`A teleconference was held on January 10, 2019, among counsel for
`
`Petitioner and Patent Owner, and Judges Easthom, Pothier, and Boudreau,
`
`related to the above IPRs. During the conference, Patent Owner requested
`
`authorization to file a motion for additional discovery. Patent Owner
`
`identified the three categories of discovery it seeks: (1) limited
`
`communications between ARM and its licensees, (2) indemnification
`
`obligations, and (3) one deposition.
`
`Patent Owner explained only ARM has been identified as the real
`
`party in interest in these proceedings, while ARM has not been identified in
`
`related infringement suits. Patent Owner identified five litigations listed in
`
`Mandatory Notice by Patent Owner Under 37 C.F.R. § 42.8 (“Paper 3”): (1)
`
`Complex Memory LLC v. Renesas Electronics Corp. et al, Case No. 5:18-cv-
`
`04103 (N.D. Cal. July 10, 2018), (2) Complex Memory, LLC v. Motorola
`
`Mobility LLC, Case No. 1:18-cv06255 (N.D. Ill. September 13, 2018), (3)
`
`Complex Memory LLC v. ZTE Corporation et al, Case No. 3:17-cv03196
`
`(N.D. Tex. November 21, 2017), (4) Complex Memory, LLC v. Texas
`
`Instruments, Inc. et al, Case No. 2:17-cv-00699 (E.D. Tex. October 13,
`
`2017, terminated July 6, 2018), and (5) Complex Memory, LLC v. Huawei
`
`Device USA Inc. et al, Case No. 2:17-cv-00700 (E.D. Tex. October 13,
`
`2017, terminated July 26, 2018). Paper 3, 1–2.
`
`2
`
`
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)
`
`
`For Patent Owner, these litigations raise questions concerning the
`
`extent the parties named in the infringement suits have control over or
`
`financial involvement with the instant IPRs. Patent Owner argues IPR2019-
`
`00053 is identical to IPR2018-00823 filed by Texas Instruments Inc.
`
`(“Texas Instruments”), which has been dismissed. Texas Instruments Inc. v.
`
`Complex Memory LLC, Case IPR2018-00823 (PTAB August 8, 2018)
`
`(Paper 12). Patent Owner stated specifically it has an interest to identify the
`
`correct real party-in-interests in these proceedings, including an interest in
`
`having the ability to raise estoppel, and the above requested discovery may
`
`lead to evidence showing unnamed real parties in interest in these
`
`proceedings.
`
`We deny the request for the below-stated reasons.
`
`
`
`II. INTRODUCTION
`
`A. Additional Discovery
`
`Under the Leahy-Smith America Invents Act (“AIA”), discovery is
`
`available for the deposition of witnesses submitting affidavits or declarations
`
`and for “what is otherwise necessary in the interest of justice.” 35 U.S.C.
`
`§ 316(a)(5). Our corresponding rules allow for routine discovery, providing:
`
`“[c]ross examination of affidavit testimony prepared for the proceeding is
`
`authorized within such time period as the Board may set.” 37 C.F.R.
`
`§ 42.51(b)(1)(ii).
`
`In addition to routine discovery, our rules allow for additional
`
`discovery, further providing: “[t]he moving party must show that such
`
`additional discovery is in the interests of justice.” 37 C.F.R. § 42.51(b)(2)(i).
`
`As the movant, Patent Owner bears the burden of establishing that the
`
`3
`
`
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)
`
`request is in the interest of justice. We generally consider five factors (the
`
`“Garmin factors”) in determining whether the interests of justice would be
`
`served by granting additional discovery requests. See Garmin Int’l, Inc. v.
`
`Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB
`
`Mar. 5, 2013) (Paper 26) (precedential). In Garmin, we held that the
`
`following factors (the so-called “Garmin factors”) are important in
`
`determining whether additional discovery is necessary in the interest of
`
`justice:
`
`1. More Than A Possibility And Mere Allegation — The mere
`possibility of finding something useful, and mere allegation that
`something useful will be found, are insufficient to demonstrate
`that the requested discovery is necessary in the interest of
`justice. The party requesting discovery should already be in
`possession of evidence tending to show beyond speculation that
`in fact something useful will be uncovered.
`
`2. Litigation Positions And Underlying Basis — Asking for the
`other party’s litigation positions and the underlying basis for
`those positions is not necessary in the interest of justice. The
`Board has established rules for the presentation of arguments
`and evidence. There is a proper time and place for each party to
`make its presentation. A party may not attempt to alter the
`Board’s trial procedures under the pretext of discovery.
`
`3. Ability To Generate Equivalent Information By Other Means
`— Information a party can reasonably figure out or assemble
`without a discovery request would not be in the interest of
`justice to have produced by the other party. In that connection,
`the Board would want to know the ability of the requesting
`party to generate the requested information without need of
`discovery.
`
`4. Easily Understandable Instructions —The questions should
`be easily understandable. For example, ten pages of complex
`instructions for answering questions is prima facie unclear.
`
`4
`
`
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)
`
`
`Such instructions are counter-productive and tend to undermine
`the responder’s ability to answer efficiently, accurately, and
`confidently.
`
`5. Requests Not Overly Burdensome To Answer — The
`requests must not be overly burdensome to answer, given the
`expedited nature of Inter Partes Review. The burden includes
`financial burden, burden on human resources, and burden on
`meeting the time schedule of Inter Partes Review. Requests
`should be sensible and responsibly tailored according to a
`genuine need.
`
`
`Id.
`
`
`B. Real Parties In Interest, Privies, And Time Bar
`
`The AIA requires that “[a] petition filed under section 311 may be
`
`considered only if . . . the petition identifies all real parties in interest.”
`
`35 U.S.C. § 312(a). In addition, “[a]n inter partes review may not be
`
`instituted if the petition requesting the proceeding is filed more than 1 year
`
`after the date on which the petitioner, real party in interest, or privy of the
`
`petitioner is served with a complaint alleging infringement of the patent.”
`
`35 U.S.C. §315(b). Our corresponding rules allow any “person who is not
`
`the owner of a patent” to file a petition unless “[t]he petition requesting the
`
`proceeding is filed more than one year after the date on which the petitioner,
`
`the petitioner’s real party-in-interest, or a privy of the petitioner is served
`
`with a complaint alleging infringement of the patent.” 37 C.F.R. § 42.101.
`
`“To decide whether a party other than the petitioner is the real party in
`
`interest, the Board seeks to determine whether some party other than the
`
`petitioner is the ‘party or parties at whose behest the petition has been
`
`filed.’” Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1336 (Fed. Cir.
`
`2018) (emphasis added). “A party that funds and directs and controls an IPR
`
`5
`
`
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)
`
`or post-grant review proceeding constitutes a ‘real party-in-interest,’ even if
`
`that party is not a ‘privy’ of the petitioner.” Id. Also, several relevant
`
`factors for determining whether a party is a real party in interest include the
`
`party’s relationship with the petitioner, the party’s relationship to the
`
`petition, and the nature of the entity filing the petition. Applications in
`
`Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018)
`
`(“AIT”).
`
`Petitioner “bears the ultimate burden of persuasion to show that its
`
`Petitions are not time-barred under § 315(b) based on a complaint served on
`
`an alleged real party in interest more than a year earlier.” Worlds Inc. v.
`
`Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018).
`
`
`
`III. ANALYSIS
`
`Garmin factor 1 requires that Patent Owner show more than mere
`
`allegations or speculation that the requested documents exist and would be
`
`useful. ARM has not been sued in the above identified litigations. Paper 3,
`
`2–3. During the conference, Patent Owner theorizes that at least some of the
`
`five named parties in these litigations may have some control (e.g., legal or
`
`financial) over ARM, such that at least some of these named parties should
`
`be named as real parties in interest in IPR2019-00053 and IPR2019-00058.
`
`Patent Owner also alluded to some information that may be under a
`
`protective order in the district court proceedings supporting its contention.
`
`Yet, Patent Owner merely alleges the possibility of finding an
`
`indemnification agreement or license between ARM and the named parties
`
`of five identified litigations. Even presuming, without agreeing, that the
`
`Petition in IPR2019-00053 is identical to the petition filed in IPR2018-
`
`6
`
`
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)
`
`00823 by Texas Instruments as alleged by Patent Owner, Texas
`
`Instruments’s petition is publicly available on the Board’s PTAB E2E
`
`website and duplicating its assertions does not demonstrate Texas
`
`Instruments has a license, indemnification agreement, or some other
`
`legal/financial obligation with ARM.
`
`As for any pertinent documents under protective order in any of the
`
`five identified litigations that supports Patent Owner’s request for additional
`
`discovery, Patent Owner may avail itself of any court and Board rules and
`
`procedures which permit information to be submitted in IPRs under seal,
`
`including filing document(s) under a protective order for “Board and Parties
`
`Only” or by other appropriate means. See, e.g., 35 U.S.C. § 316(a)(7); see
`
`also 37 C.F.R. § 42.54; Office Trial Practice Guide, 77 Fed. Reg. 48756,
`
`48760 (Aug. 14, 2012) 48756, 48760.
`
`We further note that the Petitions in IPR2019-00053 and
`
`IPR2019-00058 both were filed on October 12, 2018. Of the five identified
`
`litigations, the complaints in the two earliest were filed on October 13, 2017.
`
`Paper 3, 3. Thus, both Petitions were filed within one year of the date on
`
`which any alleged real party in interest or privy was sued for patent
`
`infringement. Paper 3, 2–3. No information on when the named parties
`
`were served with the complaints for the five identified litigations was
`
`provided in the notice or during the conference. However, Petitioner
`
`represented that service occurred sometime after the filing date of the
`
`complaints, and Patent Owner did not dispute Petitioner’s representation.
`
`Thus, based on the record, the filing date of both Petitions was less than one
`
`year after the date on which any alleged real party in interest or privy was
`
`served with a complaint alleging patent infringement.
`
`7
`
`
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)
`
`
`Accordingly, there being no evidence of a petition filed more than one
`
`year after the date on which Petitioner or any alleged real party in interest of
`
`the Petitioner was served with a complaint alleging infringement of the
`
`patent, and we perceive no potential time-bar issue under 35 U.S.C.
`
`§ 315(b). Further, to the extent the alleged real parties in interest are not
`
`properly listed in these proceedings, 35 U.S.C. § 312 permits correction of
`
`the real parties in interest depending on the circumstances, such that Patent
`
`Owner’s estoppel concerns can be resolved later in this proceeding. See Wi-
`
`Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018)
`
`(en banc) (“[I]f a petition fails to identify all real parties in interest under
`
`§ 312(a)(2), the Director can, and does, allow the petitioner to add a real
`
`party in interest.”).
`
`In addition, under 35 U.S.C. § 325(e)(2), a district court may preclude
`
`a real party in interest or privy of Petitioner from filing a civil action if a
`
`final written decision issues here, even if Petitioner does not list all the real
`
`parties in interest. Under routine discovery, Petitioner, having listed the real
`
`parties in interest in its Petition, must “serve relevant information that is
`
`inconsistent with a position advanced by the party during the proceeding
`
`concurrent with the filing of the documents or things that contains the
`
`inconsistency.” 37 C.F.R. § 42.51(b)(1)(iii).
`
`For the above reasons, this factor weigh against granting the request to
`
`file a motion for additional discovery.
`
`Garmin factor 2 indicates that asking for ARM’s litigation positions
`
`and the underlying basis for those positions is not necessary in the interest of
`
`justice. As noted above, ARM is not a party to any of the five identified
`
`litigations. In asserting IPR2019-00053 is “identical to” IPR2018-00823
`
`8
`
`
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)
`
`filed by Texas Instruments, Inc., Patent Owner’s request may encompass
`
`information related to Petitioner’s underlying basis for filing IPR2019-
`
`00053. Garmin factor 2 indicates asking for that information is not in the
`
`interest in justice. Even if the request does not encompass litigation
`
`positions, at best for Patent Owner, factor (2) does not weigh for or against
`
`granting Patent Owner’s request to file a motion for additional discovery.
`
`Garmin factor 3 indicates information a party can reasonably figure
`
`out or assemble without a discovery request would not be in the interest of
`
`justice to have produced by the other party. As noted above, Patent Owner
`
`alludes to some relevant information that may be under protective order in
`
`the above-identified litigations. However, because we do not know what
`
`this information is, factor (3) does not weigh for or against granting Patent
`
`Owner’s request to file a motion for additional discovery.
`
`Garmin factor 4 states the questions should be easily understandable.
`
`Garmin factor 5 states the requests should not be overly burdensome to
`
`answer. To summarize, Patent Owner identified three categories of
`
`discovery it seeks: (1) limited communications between ARM and its
`
`licensees, (2) indemnification obligations, and (3) one deposition. Although
`
`the first two categories are easy to understand, the “limited communications”
`
`are broad in scope and are not tailored sufficiently to Patent Owner’s
`
`genuine need for information concerning whether unnamed parties are real
`
`parties of interest in IPR2019-00053 and IPR2019-00058. Similarly, the
`
`requested deposition does not identify an intended party to be deposed or the
`
`additional information requested. This specific request does not provide
`
`sufficiently understandable instructions and makes it not possible to
`
`determine whether the request is overly burdensome. In totality, factors (4)
`
`9
`
`
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)
`
`and (5) weigh against granting Patent Owner’s request to file a motion for
`
`additional discovery.
`
`For the above reasons, we determine the Garmin factors weigh against
`
`granting Patent Owner’s request to file a motion for additional discovery.
`
`Notably, Patent Owner can avail itself of routine discovery pursuant
`
`to 37 C.F.R. § 42.51(b)(1), when and if either or both of IPR2019-00053 and
`
`IPR2019-00058 are instituted. If Patent Owner obtains sufficient new
`
`information to support that the request for additional discovery is in the
`
`interest of justice, Patent Owner may request authorization to file a motion
`
`for additional discovery at that time.
`
`In consideration of the foregoing, it is hereby ORDERED that Patent
`
`Owner’s request to submit a motion for additional discovery is denied.
`
`
`
`
`
`
`
`
`
`
`
`10
`
`
`
`Case IPR2019-00053 (Patent 5,890,195)
`Case IPR2019-00058 (Patent 6,658,576 B1)
`
`For PETITIONER:
`
`Kevin Anderson
`kpanderson@duanemorris.com
`
`Scott Felder
`sfelder@wileyrein.com
`
`
`
`For PATENT OWNER:
`
`Jeffrey Toler
`jtoler@tlgiplaw.com
`
`Daniel Ford
`dford@tlgiplaw.com
`
`
`
`
`
`11
`
`
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