Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 13
`
` September 20, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`RED.COM, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`____________
`
`
`Before BRIAN J McNAMARA, J. JOHN LEE, and JASON M. REPKO,
`Administrative Patent Judges.
`
`REPKO, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Petitioner’s Motion for Pre-Institution Discovery
`Granting Petitioner’s Request for a Reply to Patent Owner’s Preliminary
`Response
`37 C.F.R. §§ 42.5 and 42.51(b)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 13
`
` September 20, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`RED.COM, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`____________
`
`
`Before BRIAN J McNAMARA, J. JOHN LEE, and JASON M. REPKO,
`Administrative Patent Judges.
`
`REPKO, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Petitioner’s Motion for Pre-Institution Discovery
`Granting Petitioner’s Request for a Reply to Patent Owner’s Preliminary
`Response
`37 C.F.R. §§ 42.5 and 42.51(b)
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`
`SUMMARY
`Petitioner seeks to address Patent Owner’s argument and evidence
`about actual reduction to practice with pre-institution discovery and a reply
`to Patent Owner’s preliminary response. In a conference call on August 27,
`2019, Judges Lee and Repko authorized Petitioner to file a motion for pre-
`institution discovery in both IPR2019-01064 and IPR2019-01065. See Paper
`91; Ex. 3001 (email dated Aug. 26, 2019). Patent Owner was authorized to
`file an opposition. Paper 9. Authorization for Petitioner’s reply was held in
`abeyance. Id.
`Petitioner filed the motion. Paper 10 (“Mot.”). Patent Owner filed its
`opposition. Paper 12 (“Opp.”).
`This order addresses Petitioner’s request for a reply and its motion for
`pre-institution discovery. As discussed below, we grant the request for a
`reply but deny the motion for discovery. We authorize Patent Owner to file a
`sur-reply of equal length to Petitioner’s reply.
`
`PETITIONER’S MOTION FOR PRE-INSTITUTION DISCOVERY
`To determine whether to allow additional discovery, the Board applies
`several factors on a case-by-case basis. See Garmin Int’l, Inc. v. Cuozzo
`Speed Techs. LLC, IPR2012-00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013)
`(precedential) (listing factors). Here, Petitioner requests
`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
`
`
`1 For brevity, we refer to the documents from IPR2019-01064. The filings in
`IPR2019-01065 are substantially similar in all respects relevant to this order.
`
`2
`
`
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`
`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.
`Motion 1.
`Petitioner argues that Garmin factor one strongly favors production.
`Id. at 2–4. Garmin factor one is as follows:
`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.
`Garmin, slip op. at 6.
`Petitioner argues that “RED alleges actual reduction to practice of two
`cameras, neither of which was fully disclosed in a patent application until
`over 9 months later when the ’406 provisional application was filed.”
`Motion 2 (citing Ex. 1011, 21–64). Petitioner argues that “[t]his delay calls
`into question Patent Owner’s alleged reduction to practice date.” Id.
`In Petitioner’s view, Patent Owner relies on the testimony of
`interested parties to fill this nine-month gap. Id. at 2–3. Petitioner argues that
`the testimony will “better enable” the Board to evaluate credibility and the
`technical merit of the claims. Id. at 3.
`
`3
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`
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`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`
`Petitioner also argues that the requested documentation and access to
`the cameras “is necessary to assess whether the ‘Boris’ and ‘Natasha’
`cameras support RED’s actual reduction to practice claim.” Id. at 4. In
`Petitioner’s view, Patent Owner cites “generalized statements” with “no
`other supporting evidence” to show actual reduction to practice. Id.
`In Patent Owner’s view, “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.” Opp. 3. According to
`Patent Owner, “if granted, the pre-institution phase would essentially
`become a de facto trial phase, turning the entire decision on whether to
`institute a trial on its head.” Id. at 1.
`Considering the time remaining until we must issue a decision on
`institution, Petitioner’s discovery request and corresponding briefing places
`a burden on this proceeding’s schedule. As Patent Owner points out,
`“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.” Id. The scope of this request and
`the time remaining until we must issue our decision leads us to deny
`Petitioner’s request under the Garmin factors, as discussed below.
`As for Garmin factor one, Petitioner’s request for a physical
`inspection of the camera may help in assessing whether the sensor,
`processor, and compression components existed in the cameras and whether
`their performance met the limitations of the challenged claims. Motion 1. So
`there is some merit to Petitioner’s contention that Garmin factor one weighs
`in favor of the requests. Id. at 2–3.
`
`4
`
`
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`
`In Petitioner’s view, the documents and data files are relevant to
`“technical aspects and performance.” See id. at 4. But the request lacks an
`explanation of what specific “technical documentation,” “data files,” and
`“metadata” would be useful here in assessing whether Patent Owner reduced
`to practice the invention claimed in the patents at issue. Id. at 1. Given the
`breadth of the request, Petitioner’s contention that the documents and data
`would be useful is somewhat speculative. On balance, Garmin factor one is
`neutral or, at best, only slightly favors Petitioner’s request.
`We determine that Garmin factors two and three tend to favor
`Petitioner’s request. For instance, under Garmin factor two, there is nothing
`in the record indicating that Petitioner is seeking litigation positions or their
`basis. Garmin, slip op. at 6. Indeed, the parties have not identified any
`related litigation on the record at this time. See Pet. 1; Paper. 4. Under
`Garmin factor three, Petitioner has shown that it is not able to generate
`equivalent information by other means. Garmin, slip op. at 6. In particular,
`Petitioner requests information from declarants, data and documents from
`Patent Owner, and physical access to two cameras. Motion 1, 5. Although
`factors two and three tend to favor production, the breadth of the discovery
`request and the limited time available, given the constraints of the pre-
`institution period, weigh against granting the request.
`Under Garmin factor five, we consider whether the discovery request
`is overly burdensome to answer:
`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.
`
`5
`
`
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`Garmin, slip op. at 7 (emphasis added). At this stage in the proceeding, we
`find that Garmin factor five strongly disfavors the requested production on
`the facts of this case.
`Here, Petitioner broadly requests technical documentation “regarding”
`the “Mysterium” image sensor before a particular date. Motion 1. This
`request lacks sufficient explanation of what Petitioner expects the documents
`will show about the device’s performance or what kind of documents would
`be useful. As to the data request, Petitioner does not explain what constitutes
`“data” and “metadata” from the cameras, which broadly encompasses any
`and all data from these devices. See id. In this way, the requests are not
`appropriately tailored and are burdensome under Garmin factor five. Also,
`because the requests are broad and lack sufficient explanation to constrain
`that breadth, Garmin factor four—whether the instructions are “easily
`understandable”—tends to weigh against production. See Garmin, slip op. at
`14. In particular, the broad scope of the request makes it difficult to ascertain
`what specific documents or other evidence should be produced here.
`As for the inspections, Petitioner has not justified the need for
`inspections of both cameras. See Opp. 5 (characterizing the two inspections
`as “redundant”). Lastly, Petitioner’s request for depositions are overly
`burdensome because the depositions are not sufficiently limited in scope.
`See id. Thus, we determine these requests are not appropriately tailored and
`are burdensome under Garmin factor five at this stage in the proceeding.
`We also note that, if a “genuine issue of material fact” is created by
`Patent Owner’s testimonial evidence, the issue “will be viewed in the light
`most favorable to” Petitioner solely for institution purposes, and Petitioner
`would have an opportunity to cross-examine the declarants during the trial
`
`6
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`
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`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`should we institute one. See 37 C.F.R. § 42.108 (c). This guards against
`turning the pre-institution phase into a de facto trial. To be sure, testimonial
`evidence may not always raise a genuine issue of material fact. Accord
`Amendments to the Rules of Practice for Trials Before the Patent Trial and
`Appeal Board, 81 Fed. Reg. 18,750, 18,756 (Apr. 1, 2016). At this point, we
`take no position on whether Patent Owner’s testimonial evidence does here.
`As explained above, we determine that the Garmin factors, on
`balance, weigh against granting the discovery requested by Petitioner. Thus,
`we deny Petitioner’s motion for pre-institution discovery.
`
`
`PETITIONER’S REQUEST FOR A REPLY AND PATENT OWNER’S
`SUR-REPLY
`Petitioner requested a five-page reply to address Patent Owner’s
`argument and evidence about actual reduction to practice. Ex. 3001. Patent
`Owner does not oppose Petitioner’s request to file a reply if given a sur-
`reply of equal length. In the call, Petitioner proposed a briefing schedule in
`which the reply would be filed within six weeks of authorization if discovery
`is granted and within two weeks if discovery is not granted.
`We authorize Petitioner to file a reply and Patent Owner to file a sur-
`reply. Because we do not grant Petitioner’s motion for pre-institution
`discovery for the reasons discussed above, Petitioner’s reply is due no later
`than two weeks from the entry of this order, and Patent Owner’s sur-reply is
`due no later than two weeks from Petitioner’s reply.
`Petitioner’s reply must be limited to addressing Patent Owner’s
`argument and evidence about actual reduction to practice, including whether
`that evidence created a “genuine issue of material fact” within the meaning
`of 37 C.F.R. § 42.108(c). Patent Owner’s sur-reply must only address the
`
`7
`
`
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`issues raised in Petitioner’s reply. Also, the reply and sur-reply must be
`limited to five pages.
`
`
`ORDER
`
`It is
`ORDERED that Petitioner is authorized to file a reply to Patent
`Owner’s preliminary response, which must be filed no later than two weeks
`from the entry of this order, must be no more than five pages, and must be
`limited to addressing Patent Owner’s argument and evidence about actual
`reduction to practice;
`FURTHER ORDERED that Patent Owner is authorized to file a sur-
`reply, which must be filed no later than two weeks from the entry of this
`order, must be no more than five pages, and must be limited to responding to
`Petitioner’s reply; and
`FURTHER ORDERED that Petitioner’s motion for pre-institution
`discovery is denied.
`
`
`
`
`8
`
`
`
`Case IPR2019-01064 (Patent 9,230,299 B2)
`Case IPR2019-01065 (Patent 9,245,314 B2)
`
`For PETITIONER:
`
`Michael Parsons
`Andrew Ehmke
`Jordan Maucotel
`HAYNES AND BOONE, LLP
`michael.parsons@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`jordan.maucotel@haynesboone.com
`
`For PATENT OWNER:
`
`Joseph Re
`Douglas Muehlhauser
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2jrr@knobbe.com
`2dgm@knobbe.com
`
`
`
`9
`
`
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