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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE INC.,
`Petitioner,
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`v.
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`RED.COM, LLC,
`Patent Owner
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`_____________________
`
`IPR2019-01065
`Patent No. 9,245,314
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`_____________________
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`PETITIONER’S MOTION FOR PRE-INSTITUTION
`DISCOVERY FROM PATENT OWNER
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`PETITIONER’S EXHIBIT LIST
`Updated: Sept. 4, 2019
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`Ex. 1008
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`Ex. 1007
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`Ex. 1001 U.S. Patent No. 9,245,314
`Ex. 1002
`Prosecution History of U.S. Patent No. 9,245,314
`Ex. 1003 Declaration of Cliff Reader, Ph.D. under 37 C.F.R. § 1.68
`Ex. 1004
`Curriculum Vitae of Cliff Reader, Ph.D.
`Ex. 1005 U.S. Patent No. 9,565,419 to Presler (“Presler”)
`Ex. 1006 U.S. Patent No. 7,656,561 to Molgaard et al. (“Molgaard”)
`Ning Zhang et al., “Lossless Compression of Color Mosaic
`Images,” IEEE Transactions on Image Processing Vol. 15, No. 6
`(June 2006) (“Zhang”)
`Ben Long, REAL WORLD APERTURE, 1st Ed., ISBN: 0-321-44193-1
`(July 11, 2006) (“Long”)
`Serial ATA International Organization: Serial ATA Revision 2.6
`Ex. 1009
`(Feb. 15, 2007)
`Ex. 1010 U.S. Provisional Application No. 60/911,196 (“The ’196
`Application”)
`Ex. 1011 U.S. Provisional Application No. 61/017,406 (“The ’406
`Application”)
`Ex. 1012 U.S. Provisional Application No. 60/923,339 (“the ’339
`Application”)
`Ex. 1013 U.S. Patent No. 7,349,574 to Sodini et al. (“Sodini”)
`Ex. 1014 U.S. Patent No. 8,170,402 to Frost-Ruebling et al. (“Frost”)
`Ex. 1015
`Reserved
`Ex. 1016 U.S. Patent No. 3,971,065 to Bayer (“Bayer”)
`Ex. 1017
`Excerpts from comment board
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`RELIEF REQUESTED
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`
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`Petitioner’s Motion for Pre-Institution Discovery
`IPR2019-01065 (U.S. Patent No. 9,245,314)
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`I.
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`Patent Owner RED.COM, LLC (“RED”) asserts actual reduction to practice
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`of two cameras and relies on the testimony of interested parties for support. See
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`POPR, pp.3-4; Exs. 2001, 2011, 2017. Notwithstanding the fact that “a genuine
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`issue of material fact created by such testimonial evidence will be viewed in the
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`light most favorable to the petitioner solely for purposes of deciding whether to
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`institute an inter partes review” (37 C.F.R. § 42.108(c)), Petitioner, as authorized
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`by Paper 9, respectfully requests discovery of the following so that the Board can
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`consider a more complete record:1
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`1. Deposition of Messrs. Jannard, Nattress, and Land, pursuant to 37 C.F.R.
`§ 42.53, each of whom submitted declarations in each proceeding to
`support RED’s claim of actual reduction to practice of the “Boris” and
`“Natasha” cameras (see Exs. 2001, 2011, and 2017);
`2. Technical documentation in RED’s possession dated prior to April 13,
`2007 regarding the “Mysterium CMOS image sensor” (see POPR at 36);
`3. Physical access to inspect the “Boris” and “Natasha” cameras by
`Petitioner’s counsel and expert; and
`4. Electronic copies of data files in RED’s possession generated by either
`the “Boris” or “Natasha” cameras prior to April 13, 2007, with metadata.
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`1 Petitioner is filing a near identical motion in IPR2019-01064, but both motions
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`constitute a single request for discovery for the combined proceedings.
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`1
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`
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`Petitioner’s Motion for Pre-Institution Discovery
`IPR2019-01065 (U.S. Patent No. 9,245,314)
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`For discovery requests, the Board considers (1) where there is more than a
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`“mere allegation” something useful will be uncovered; (2) the request does not
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`attempt to alter the Board’s trial procedure by seeking litigation positions; (3)
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`equivalent information is not easily obtainable by other means; (4) instructions are
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`easy to understand; and (5) requests are not overly burdensome. Garmin Int’l Inc.
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`v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, at 6-16 (precedential).
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`Discovery here is in the “interests of justice” because evidence on the threshold
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`issue of actual reduction to practice is “uniquely in the possession of the party that
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`raised it.” 77 Fed. Reg. 48756, 48761 (Aug. 14, 2012).
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`A. Garmin Factor One Strongly Favors Production
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`Petitioner seeks discovery that is “more than a possibility and mere
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`allegation” because RED alleges actual reduction to practice of two cameras,
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`neither of which was fully disclosed in a patent application until over 9 months
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`later when the ’406 provisional application was filed. See Ex. 1011, pp.21-64. This
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`delay calls into question Patent Owner’s alleged reduction to practice date. DSL
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`Dynamic Sciences, Ltd. v. Union Switch & Signal, Inc., 928 F.2d 1122, 1126 (Fed.
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`Cir. 1991) (“events occurring after an alleged actual reduction to practice can call
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`into question whether reduction to practice has in fact occurred.”).
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`To fill this 9-month gap, RED relies on testimony of interested parties. But
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`this testimony fails at a minimum to describe a key claimed element—the “image
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`2
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`
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`Petitioner’s Motion for Pre-Institution Discovery
`IPR2019-01065 (U.S. Patent No. 9,245,314)
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`sensor.” Tellingly, RED relies solely on its declarants that the “Boris” and
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`“Natasha” cameras “employed a Mysterium CMOS image sensor, which
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`implemented a Bayer pixel pattern.” POPR, pp.35-36. RED offers nothing else—
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`no photographs, no data sheets, no development contracts with third-parties, etc.—
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`showing an image sensor “comprising first, second and third pluralities of light
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`sensitive devices” that was “configured to convert … raw mosaiced image data”
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`and “output … resolution of at least 2k and at a frame rate of at least about 23
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`frames per second….” Ex.1001, 15:47-63. Cross-examination of RED’s declarants
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`will therefore produce probative evidence, as each declarant implies specific
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`knowledge of the Mysterium image sensor. See Ex. 2001, p.4; Ex. 2017, p.8; Ex.
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`1017, p.2 (comment by declarant Jannard that he “found” the Mysterium image
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`sensor), available at http://www.reduser.net/forum/showthread.php?53370-RED-
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`A-Look-Back&p=997323&viewfull=1#post997323.
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`Consequently, cross-examination of RED’s declarants is “necessary in the
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`interest of justice” because it will better enable the Board to assess if testimony by
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`interested parties technically and credibly support RED’s alleged actual reduction
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`to practice. See IPR2013-00576, Paper 36 (stating that as a result of not making
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`declarant available “we will give that Declaration little to no weight as Patent
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`Owner has not been offered a fair opportunity to challenge his testimony”); see
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`also Fed. R. Evid. 801, 802. Moreover, this request only seeks evidence based on
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`3
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`Petitioner’s Motion for Pre-Institution Discovery
`IPR2019-01065 (U.S. Patent No. 9,245,314)
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`statements from RED’s declarants, which indicates more than “the mere possibility
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`of finding something useful” in this case. Garmin at 6. Petitioner’s request should
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`thus be granted as it is narrowly tailored to deposing declarants with knowledge
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`essential to RED’s actual reduction to practice claim.
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`Petitioner’s requests regarding documentation describing the Mysterium
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`image sensor, data files, and access to the “Boris” and “Natasha” cameras are also
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`“necessary in the interest of justice” because the claims recite several limitations
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`regarding technical aspects and performance of a “video camera” but the evidence
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`cited in the POPR only makes generalized statements. For example, RED cites
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`only testimony that the “Boris” and “Natasha” cameras “employed a Mysterium
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`CMOS image sensor, which implemented a Bayer pixel pattern.” See POPR, p.36.
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`RED cites similarly naked testimony about the processing and compression
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`modules: “the processing module was manufactured by Xilinx, and the
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`compression chips were manufactured by Analog Device.” POPR, p.37. RED
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`offers no other supporting evidence showing actual reduction to practice of these
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`technical aspects. The complete absence of documentary corroboration shows that
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`the requested evidence is necessary to assess whether the “Boris” and “Natasha”
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`cameras support RED’s actual reduction to practice claim.
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`B.
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`The Remaining Garmin Factors Favor Production
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`Each of Garmin factors 2-5 also support Petitioner’s request. With respect to
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`4
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`Petitioner’s Motion for Pre-Institution Discovery
`IPR2019-01065 (U.S. Patent No. 9,245,314)
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`the second factor, Petitioner is not seeking litigation positions; Petitioner is seeking
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`evidence directly related to RED’s alleged reduction to practice. With respect to
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`the third factor, the requested evidence is only available through RED’s declarants
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`and the documentation and physical cameras in RED’s possession. With respect to
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`the fourth factor, this request is limited to the depositions of RED’s declarants and
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`to documents about and data files from the cameras upon which the declarants rely.
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`Finally, this request is not overly burdensome because it is solely of RED’s
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`own making. RED maintains the burden to prove actual reduction to practice and
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`RED is best positioned to produce evidence that satisfies this burden. See In re
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`NTP, 654 F.3d 1279, 1291. Petitioner’s request is limited to discovering technical
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`data essential to evaluate RED’s alleged reduction to practice. It is therefore
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`disingenuous for RED to benefit from its own declarants’ testimony while
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`simultaneously arguing that this request is burdensome.
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`II. CONCLUSION
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`For at least the foregoing reasons, the Board should grant this motion and
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`order RED to promptly produce the requested evidence. Alternatively, Petitioner
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`respectfully submits that the issue of actual reduction to practice be held in
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`abeyance in the Institution Decision so that it can be addressed during the trial
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`phase with a more complete record.
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`5
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`Petitioner’s Motion for Pre-Institution Discovery
`IPR2019-01065 (U.S. Patent No. 9,245,314)
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`Dated: September 4, 2019
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`Respectfully submitted,
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`
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`
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`/Michael S. Parsons/
`Michael S. Parsons
`Lead Counsel for Petitioner.
`Registration No. 58,767
`
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 4000
`Dallas, Texas 75219
`Telephone: 972-739-8611
`Facsimile: 214-200-0853
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`6
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`Petitioner’s Motion for Pre-Institution Discovery
`IPR2019-01065 (U.S. Patent No. 9,245,314)
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that service
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`was made on Patent Owner as detailed below:
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`Date of service September 4, 2019
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`Manner of service Electronic Mail to:
`2jrr@knobbe.com
`2dgm@knobbe.com
`BoxRedcom7C4LP@knobbe.com
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`Documents served Motion for Pre-Institution Discovery; Petitioner’s Exhibit
`List; Ex. 1017
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`Joseph R. Re
`Douglas G. Muehlhauser
`Knobbe Martens Olson & Bear LLP
`2040 Main Street
`Fourteenth Floor
`Irvine, CA 92614
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`Persons served
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`/Michael S. Parsons/
`Michael S. Parsons
`Lead Counsel for Petitioner.
`Registration No. 58,767
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`7
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