Filed: September 11, 2019
`
`
`By:
`
`Filed on behalf of:
`RED.COM, LLC
`Joseph R. Re
`Douglas G. Muehlhauser
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: BoxRedcom7C4LP@knobbe.com
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`RED.COM, LLC,
`Patent Owner.
`__________________________________
`
`Case No. IPR2019-01065
`Patent No. 9,245,314
`__________________________________
`
`PATENT OWNER RED.COM, LLC’S
`OPPOSITION TO MOTION FOR PRE-INSTITUTION DISCOVERY
`
`
`
`
`
`By:
`
`Filed on behalf of:
`RED.COM, LLC
`Joseph R. Re
`Douglas G. Muehlhauser
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: BoxRedcom7C4LP@knobbe.com
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`RED.COM, LLC,
`Patent Owner.
`__________________________________
`
`Case No. IPR2019-01065
`Patent No. 9,245,314
`__________________________________
`
`PATENT OWNER RED.COM, LLC’S
`OPPOSITION TO MOTION FOR PRE-INSTITUTION DISCOVERY
`
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`I.
`
`
`
`PETITIONER’S DISCOVERY IS UNPRECEDENTED, PREMATURE,
`UNNECESSARY, AND UNWARRANTED UNDER GARMIN
`
`Petitioner seeks pre-institution discovery encompassing three unrestricted
`
`depositions, multiple categories of documents and data files from over 12 years ago,
`
`and two physical inspections. Petitioner states that this extensive pre-institution
`
`discovery is needed to assess “a more complete record” relating to Patent Owner’s
`
`evidence of a prior reduction to practice. Mot. 1. Even in the context of discovery
`
`pertaining to a prior reduction to practice, the breadth of Petitioner’s pre-institution
`
`discovery request appears to be unprecedented. And certainly, no decision has ever
`
`authorized such extensive pre-institution discovery, as attested by Petitioner’s lack
`
`of citation to any prior Board decision granting such discovery. This is unsurprising
`
`because, if granted, the pre-institution phase would essentially become a defacto trial
`
`phase, turning the entire decision on whether to institute a trial on its head.
`
`Importantly, however, such extensive pre-institution discovery is particularly
`
`premature and unwarranted here because Patent Owner’s prior reduction to practice
`
`is not the sole basis upon which the Board should deny institution. Pre-institution
`
`discovery, like all “additional discovery,” is only warranted where it is “necessary
`
`in the interests of justice.” Garmin Int’l Inc. v. Cuozzo Speed Techs., LLC, IPR2012-
`
`00001, Paper 26, at 6-16 (precedential). Petitioner argues the requested discovery is
`
`in the “interests of justice” because Patent Owner is in possession of “evidence on
`
`-1-
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`the threshold issue of actual reduction to practice.” Mot. 2 (emphasis added).
`
`However, as Patent Owner explained in its Preliminary Response, Petitioner failed
`
`to satisfy its prima facie showing on obviousness, a separate “threshold” issue which
`
`itself warrants denial of institution. POPR at 63-70. Thus, Petitioner’s discovery is
`
`not “necessary” because even if Petitioner obtained its requested discovery, it would
`
`not address all bases warranting denial of institution. Petitioner’s Motion should be
`
`denied for this reason alone. See Choirock Contents Factor Co., Ltd. v. Spin Master
`
`Ltd., IPR2019-00897, Paper 13, at 6-7 (denying pre-institution discovery where the
`
`information sought was not necessary to decide institution).
`
`Nevertheless, Petitioner’s Motion should be denied for the additional reason
`
`that it fails to satisfy the strict gatekeeping standards set forth in Garmin. “The test
`
`for a party seeking additional discovery in an inter partes review is a strict one.”
`
`Symantec Corp. v. Finjan, Inc., IPR2015-01545, Paper 9, at 4 (emphasis added).
`
`“[R]equest[s] for pre-institution discovery . . . must be closely scrutinized. . . .” Id.
`
`at 5 (citation omitted); Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper
`
`32, at 4 (the “legislative history makes it clear that the interest of justice should be
`
`limited to minor discovery and special circumstances.”) (citation omitted).
`
`Accordingly, a party may not use a motion for additional discovery as “an
`
`opportunity to enter into a ‘fishing expedition’ in the hopes that something will
`
`emerge that will aid a party’s case.” ACCO Brands Corp. v. Fellowes, Inc.,
`
`-2-
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`IPR2013-00566, Paper 20, at 5. But that is precisely what Petitioner seeks here.
`
`Petitioner asserts that it needs expansive discovery to “better enable the Board
`
`to assess if testimony by interested parties technically and credibly supports RED’s
`
`alleged actual reduction to practice.” Mot. 3. Petitioner explicitly calls into question
`
`the testimony of Patent Owner’s declarants who confirm the components used in
`
`RED’s “Boris” and “Natasha” video cameras.1 Mot. 4. Petitioner’s supposed need
`
`for discovery is no more than its stated need to confirm the testimony that sensor,
`
`processor, and compression components existed in the cameras.2 Id.
`
`To obviate Petitioner’s extensive and burdensome discovery requests, Patent
`
`Owner offered (in the days leading up to this Opposition) to allow Petitioner to
`
`inspect Boris in exchange for Petitioner’s withdrawal of the present discovery
`
`
`1 Although Petitioner labels Patent Owner’s declarants as “interested,” at least one
`
`of the declarants who confirmed the image sensor in “Boris” is no longer an
`
`employee of RED. See Ex. 2022.
`
`2 Petitioner selectively points to Patent Owner’s patent filings in an attempt to “call[]
`
`into question” Patent Owner’s reduction to practice date. Mot. 2-4. But Petitioner
`
`ignores Patent Owner’s April 11, 2007 (pre-Pressler) provisional application, titled
`
`“Compression of Raw Sensor Data Using Bayer Pattern,” which discloses the Bayer-
`
`pattern image sensor that Petitioner says it needs to corroborate. Ex. 1010.
`
`-3-
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`Motion. That inspection would have allowed Petitioner to confirm that Boris
`
`includes the technical components as Patent Owner’s declarants testified. Given
`
`Petitioner’s stated bases for the discovery it seeks, the inspection offered by Patent
`
`Owner would have “better enable[d] the Board to assess if testimony by interested
`
`parties technically and credibly support RED’s alleged actual reduction to practice.”
`
`Mot. 3. However, Petitioner refused the offer. Thus, Petitioner could only be
`
`seeking this unprecedented breadth of pre-institution discovery in an attempt to
`
`uncover evidence that it hopes might help its case, an improper basis for additional
`
`discovery. ACCO, IPR2013-00566, Paper 20, at 5.
`
`Moreover, for each of Petitioner’s four discovery requests, Petitioner fails to
`
`meet its burden under the first Garmin factor (“More Than A Possibility And Mere
`
`Allegation”). Petitioner points to no specific evidence or reasoning tending to show
`
`beyond speculation what useful information would be uncovered. For example,
`
`Petitioner fails to show why discovery regarding the Bayer image sensor would be
`
`“useful” to Petitioner. Id. Indeed, Petitioner nowhere states that if the discovery it
`
`seeks confirmed the reduction to practice, Petitioner would withdraw its Petition.
`
`On the contrary, while Petitioner asserts that its requests are “necessary” to
`
`corroborate RED’s reduction to practice claim, Mot. 4, Petitioner rejected Patent
`
`Owner’s offer for an inspection of Boris that would have provided such
`
`corroboration. Thus, Petitioner does not seek “useful” discovery, but rather a broad
`
`-4-
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`swath of discovery “in the hopes that something will emerge that will aid” its case.
`
`ACCO, IPR2013-00566, Paper 20, at 5. Petitioner’s requested pre-institution
`
`discovery is thus impermissible, not “necessary in the interests of justice,” and
`
`should be denied.
`
`Petitioner also fails the fifth Garmin factor (“Requests Not Overly
`
`Burdensome”). Petitioner’s Request 1 (Mot. 1) is, by itself, overly burdensome in
`
`seeking depositions of RED’s Founder, and its President, and a named inventor who
`
`resides in Canada, with no limit on scope. Request 2 is not limited to the Boris and
`
`Natasha cameras at issue, but seeks any “[t]echnical documentation . . . regarding
`
`the [image sensor].” Thus, Request 2 is overly burdensome because Patent Owner
`
`would need to scour for documents “regarding” the image sensor component.
`
`ACCO, IPR2013-00566, Paper 20, at 6. Along with Request 2, Request 4 is also
`
`overly burdensome because Petitioner “does not explain adequately what material
`
`constitutes” the “[t]echnical documentation” of Request 2 or the “data files” and
`
`“metadata” of Request 4. Id. at 6-7. Compounding the burden, Patent Owner’s
`
`reduction to practice took place over 12 years ago, and it is not even clear to what
`
`extent the requested documents and data files still exist. Finally, Petitioner’s conduct
`
`of rejecting the reasonable offer to inspect Boris, in favor of pursuing unprecedented
`
`discovery, should not be rewarded by now granting Petitioner the inspection it
`
`rejected, much less redundant inspections of both Boris and Natasha.
`
`-5-
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`
`
`Respectfully submitted,
`
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`Dated: September 11, 2019
`
`
`
`By: /Doug Muehlhauser/
`Joseph R. Re (Reg. No. 31,291)
`Douglas G. Muehlhauser (Reg. No. 42,018)
`Knobbe, Martens, Olson & Bear, LLP
`E-mail: BoxRedcom7C4LP@knobbe.com
`Customer No. 20,995
`(949) 760-0404
`Attorneys for Patent Owner
`RED.COM, LLC
`
`
`
`-6-
`
`
`
`Apple v. RED.COM
`U.S. Patent No. 9,245,314 - IPR2019-01065
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e)(1) and agreement of the
`
`parties, a true and correct copy of the foregoing PATENT OWNER RED.COM,
`
`LLC’S OPPOSITION TO MOTION FOR PRE-INSTITUTION DISCOVERY
`
`are being served via email on September 11, 2019 to counsel for Apple Inc. at the
`
`email addresses below:
`
`Michael S. Parsons
`michael.parsons.ipr@haynesboone.com
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Jordan Maucotel
`jordan.maucotel.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`
`
`By: /Doug Muehlhauser/
`Joseph R. Re (Reg. No. 31,291)
`Douglas G. Muehlhauser (Reg. No. 42,018)
`Knobbe, Martens, Olson & Bear, LLP
`E-mail: BoxRedcom7C4LP@knobbe.com
`Attorneys for Patent Owner
`RED.COM, LLC
`
`
`
`Dated: September 11, 2019
`
`
`31278032
`
`-7-
`
`
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