throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 35
`Entered: December 6 , 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IPA TECHNOLGIES, INC.,
`Patent Owner.
`
`IPR2019-00730
`IPR2019-00731
`Patent 7,069,560 B11
`
`
`
`
`
`
`
`
`
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`BART A. GERSTENBLITH, 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.
`
`

`

`IPR2019-00730
`IPR2019-00731
`Patent 7,069,560 B1
`
`
`
`
`Patent Owner filed an authorized “Motion Under 37 C.F.R. § 42.52(a)
`
`to Apply for Subpoena Under 35 U.S.C. § 24 to Compel Testimony from
`
`Adam J. Cheyer and David L. Martin” on November 20, 2019, in IPR2019-
`
`00730 and IPR2019-00731. Paper 27 (“Mot.”).2 In both cases, Patent
`
`Owner seeks authorization to file a subpoena to compel testimony from the
`
`named-inventors of U.S. Patent 7,069,560 B1 (“the ’560 patent”), Messrs.
`
`Martin and Cheyer, to rebut Petitioner’s arguments concerning whether
`
`Exhibit 10113 qualifies as prior art to the ’560 patent. Mot. 2. Patent
`
`Owner’s motion addresses the factors set forth for such discovery in Garmin
`
`International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001,
`
`Paper 26 at 6–7 (PTAB Mar. 5, 2013). Id. at 3–5.
`
`Petitioner filed an “Opposition to Patent Owner’s Motion to Apply for
`
`Subpoena to Compel Testimony” (Paper 30, “Opp.”), and Patent Owner
`
`filed a “Reply in Support of its Motion Under 37 C.F.R. § 42.52(a) to Apply
`
`for Subpoena to Compel Testimony from Adam J. Cheyer and David L.
`
`Martin” (Paper 33, “Reply”).
`
`Patent Owner’s motion sets forth the efforts to obtain testimony in the
`
`form of declarations from Messrs. Cheyer and Martin related to Petitioner’s
`
`contentions regarding Exhibit 1011. Mot. 1–2. Following unsuccessful
`
`
`2 For clarity and expediency, references to paper or exhibit numbers apply to
`IPR2019-00730, unless indicated otherwise. Identical papers were filed in
`IPR2019-00731. See Papers 28, 31, and 34 (IPR2019-00731).
`3 David L. Martin, Adam J. Cheyer, Douglas B. Moran, Building Distributed
`Software Systems with the Open Agent Architecture, PROCEEDINGS OF THE
`THIRD INTERNATIONAL CONFERENCE ON THE PRACTICAL APPLICATION OF
`INTELLIGENT AGENTS AND MULTI-AGENT TECHNOLOGY 355 (1998)
`(Ex. 1011, “Martin”).
`
`2
`
`

`

`IPR2019-00730
`IPR2019-00731
`Patent 7,069,560 B1
`
`attempts to obtain voluntary declarations from Messrs. Cheyer and Martin,
`
`
`
`Patent Owner now seeks a subpoena to compel the testimony. Id. (citing
`
`Ex. 2008 ¶¶ 4–20; Ex. 2009 ¶¶ 6–10). Petitioner argues that Patent Owner’s
`
`motion is belated and acknowledges that changes to the schedules may be
`
`required to accommodate the testimony sought due to Patent Owner’s
`
`alledged lack of diligence. Opp. 2–3; see Mot. 3 n.1 (Patent Owner
`
`acknowledging that schedule changes may be needed).
`
`A party moving for a subpoena “must show that such additional
`
`discovery is in the interests of justice.” 37 C.F.R. § 42.51(b)(2). The Board
`
`has identified factors important in determining whether an additional
`
`discovery request meets the standard of being “in the interest of justice.”
`
`Garmin International, Inc., IPR2012-00001, slip op. at 6–7. Having
`
`reviewed Patent Owner’s request and arguments, we find that the Garmin
`
`factors weigh in favor of allowing the discovery. Mot. 3–5.
`
`Petitioner’s arguments regarding Patent Owner’s belated timing and
`
`lack of diligence to obtain the testimony sought from Messrs. Cheyer and
`
`Martin (Opp. 3–5) do not negate the Garmin factors regarding the
`
`information sought and whether it is in the interest of justice. In addition,
`
`Petitioner’s arguments that the testimony Patent Owner seeks would not be
`
`useful or that delays in the schedule would be overly burdensome to
`
`Petitioner are not persuasive.
`
`Here, we agree with Patent Owner that the testimony sought is more
`
`than mere allegation that useful information will be discovered and is not
`
`available through other means. Mot. 3–4. Although the schedules in
`
`IPR2019-00730 and IPR2019-00731 and their related cases may be
`
`3
`
`

`

`IPR2019-00730
`IPR2019-00731
`Patent 7,069,560 B1
`
`impacted, these speculative changes are not sufficient to rebut the interest of
`
`
`
`justice regarding the information Patent Owner seeks at this time. We
`
`encourage the parties to meet and confer to address any scheduling issues
`
`this discovery presents. Upon reviewing Patent Owner’s motion and
`
`Petitioner’s opposition, we agree with Patent Owner that the Garmin factors
`
`favor allowing Patent Owner to pursue the discovery sought.
`
`It is
`
`ORDERED that Patent Owner’s Motion Under 37 C.F.R. § 42.52(a)
`
`to Apply for Subpoena Under 35 U.S.C. § 24 to Compel Production of
`
`Testimony from Adam J. Cheyer and David L. Martin is granted; and
`
`FURTHER ORDERED that Patent Owner 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 Adam J. Cheyer and David L.
`
`Martin is to be taken.
`
`
`
`
`
`4
`
`

`

`
`
`IPR2019-00730
`IPR2019-00731
`Patent 7,069,560 B1
`
`PETITIONER:
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`Joseph Palys
`josephpalys@paulhastings.com
`
`Daniel Zeilberger
`danielzeilberger@paulhastings.com
`
`Arvind Jairam
`arvindjairam@paulhastings.com
`
`
`
`
`PATENT OWNER:
`
`Steven Hartsell
`shartsell@skiermontderby.com
`
`Alexander Gasser
`agasser@skiermontderby.com
`
`Sarah Spires
`sspires@skiermontderby.com
`
`
`
`
`
`
`5
`
`

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