Trials@uspto.gov
`571-272-7822
`
`Paper 21
`Date: April 30, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`TELA INNOVATIONS, INC.,
`Patent Owner.
`
`
`
`IPR2019-01636 (Patent 10,141,334 B2)
` IPR2019-01637 (Patent 10,141,335 B2)1
`
`
`
`
`
`
`
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 The parties are not authorized to use this style heading for any subsequent
`papers.
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`
`Tela Innovations, Inc. (“Patent Owner”) contacted the Board via email
`
`on April 27, 2020, to request authorization to file a motion for additional
`
`discovery regarding: (1) infringement contentions served in the related
`
`district court litigation; and (2) sales of Intel Corporation (“Petitioner”)
`
`products that are the subject of the related district court litigation. See
`
`Exhibit A. The Board responded that the request appeared to be similar to
`
`Patent Owner’s request in related cases IPR2019-01520, -01521, and
`
`-01522. Id. The Board asked the parties to indicate whether this was the
`
`case, and whether the parties’ positions on briefing were the same as in those
`
`related cases. Id. The parties replied on April 29, 2020: Patent Owner
`
`stated that its proposed motions are for the same or similar documents and
`
`would be made for the same or similar reasons as in the related cases;
`
`Petitioner stated that it opposed discovery for the same reasons it opposed
`
`discovery in the related cases. Id.
`
`In related cases IPR2019-01520, -01521, and -01522, a telephone
`
`conference was held on April 3, 2020, among respective counsel for
`
`Petitioner, Patent Owner, and Judges Kokoski, Kalan, and Derrick. See,
`
`e.g., IPR2019-01520, Ex. 1049 (conference call transcript). The subject of
`
`the call was Patent Owner’s substantially similar request for authorization to
`
`file a motion for additional discovery regarding: (1) infringement
`
`contentions served in the related district court litigation; and (2) sales of
`
`Petitioner’s products that are the subject of the related district court
`
`litigation. During that call, Petitioner articulated its reasons for opposing
`
`Patent Owner’s request.
`
`After considering the parties’ arguments in that call, we determined
`
`that briefing on Patent Owner’s request for authorization to file a motion for
`
`2
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`additional discovery was warranted. Having considered those arguments,
`
`and having been informed by the parties that those arguments are
`
`substantially similar to the parties’ arguments in the above-identified
`
`proceedings, we authorize Patent Owner to file a motion for additional
`
`discovery in each of the above-identified proceedings, not to exceed 7 pages.
`
`Petitioner is authorized to file an opposition to Patent Owner’s motion in
`
`each of the above-identified proceedings, also not to exceed 7 pages. No
`
`reply is authorized at this time. No additional evidence is authorized with
`
`any of the filings.
`
`Patent Owner is reminded that the motion must clearly identify the
`
`limited and focused discovery being requested. In addition, the motion must
`
`explain, with specific facts and information, why such additional discovery
`
`“is in the interests of justice.” 37 C.F.R. § 42.51(b)(2)(i). We direct Patent
`
`Owner’s attention to Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`
`IPR2012-00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013) (precedential), which
`
`sets forth the factors the Board considers when determining whether
`
`additional discovery is in the interests of justice.
`
`Accordingly, it is
`
`ORDERED that Patent Owner’s request for authorization to file a
`
`motion for additional discovery in each of the above-identified proceedings
`
`is GRANTED. The motions are due no later than May 7, 2020, and must
`
`not exceed seven pages. Petitioner is authorized to file an opposition to each
`
`motion. Petitioner’s oppositions are due one week after Patent Owner’s
`
`motions are filed, and must not exceed seven pages.
`
`
`
`
`
`
`
`3
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`
`FOR PETITIONER:
`
`Todd Friedman
`Todd.friedman@kirkland.com
`
`Gregory Arovas
`Greg.arovas@kirkland.com
`
`F. Christopher Mizzo
`Chris.mizzo@kirkland.com
`
`Bao Nguyen
`bnguyen@kirkland.com
`
`FOR PATENT OWNER:
`
`Gunnar Leinberg
`leinberg@pepperlaw.com
`
`Bryan Smith
`smithbc@pepperlaw.com
`
`Nicholas Gallo
`gallon@pepperlaw.com
`
`
`
`
`
`
`
`4
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`
`EXHIBIT A
`
`
`
`
`From: Nguyen, Bao <bnguyen@kirkland.com>
`Sent: Wednesday, April 29, 2020 12:51 PM
`To: Smith, Bryan C. <smithbc@pepperlaw.com>; Trials <Trials@USPTO.GOV>
`Cc: #INTEL-TELA-IPR <INTEL-TELA-IPR@kirkland.com>; Friedman, Todd M.
`<tfriedman@kirkland.com>; Arovas, Greg <garovas@kirkland.com>; Mizzo, F. Christopher
`<chris.mizzo@kirkland.com>; Leinberg, Gunnar <leinberg@pepperlaw.com>; Gallo, Nicholas J.
`<gallon@pepperlaw.com>; Zappia, Andrew P. <zappiaa@pepperlaw.com>; McCarthy, Alison L.
`<mccartha@pepperlaw.com>; Ford, Carla <fordc@pepperlaw.com>; Harris, Jill M.
`<harrisjm@pepperlaw.com>
`Subject: RE: IPR2019-01636 (334) and IPR2019-01637 (335) – Patent Owner Request for
`Conference Call
`
`Your Honors,
`
`In light of Patent Owner’s representation, Petitioner confirms that it opposes the discovery for the
`same reasons it opposed discovery in the related cases.
`
`Best regards,
`Bao
`
`Bao Nguyen
`Kirkland & Ellis LLP
`555 California Street, SF
`(415) 439-1425
`
`
`From: Smith, Bryan C. <smithbc@pepperlaw.com>
`Sent: Wednesday, April 29, 2020 8:48 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: #INTEL-TELA-IPR <INTEL-TELA-IPR@kirkland.com>; Friedman, Todd M.
`<tfriedman@kirkland.com>; Arovas, Greg <garovas@kirkland.com>; Mizzo, F. Christopher
`<chris.mizzo@kirkland.com>; Nguyen, Bao <bnguyen@kirkland.com>; Leinberg, Gunnar
`<leinberg@pepperlaw.com>; Gallo, Nicholas J. <gallon@pepperlaw.com>; Zappia, Andrew P.
`<zappiaa@pepperlaw.com>; McCarthy, Alison L. <mccartha@pepperlaw.com>; Ford, Carla
`<fordc@pepperlaw.com>; Harris, Jill M. <harrisjm@pepperlaw.com>
`Subject: RE: IPR2019-01636 (334) and IPR2019-01637 (335) – Patent Owner Request for
`Conference Call
`
`Your Honors,
`
`In response to the below communication, Patent Owner states that its proposed motions
`for additional discovery in IPR2019-01636 (334) and IPR2019-01637 (335) are for the
`
`5
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`same or similar documents and would be made for the same or similar reasons as the
`additional discovery motions filed in IPR2019-01520, -01521, and -01522.
`
`Respectfully,
`
`
`
`Bryan C. Smith
`
`Associate
`
`
`
`
`
`70 Linden Oaks | Suite 210
`
`Rochester, NY 14625-2804
`
`p: 585.270.2141 | f: 800.589.4728 | bio
`
`
`
`
`
`Effective July 1, 2020, Pepper Hamilton will combine with Troutman Sanders to become
`Troutman Pepper Hamilton Sanders LLP (Troutman Pepper). On that date, my email address will
`change, while my phone number will remain the same. My former Pepper Hamilton email
`address will work for a period of time after July 1. The new Troutman Pepper will offer expanded
`capabilities and practice strengths while continuing to deliver powerful solutions to clients’ legal
`and business issues with a hallmark focus on client care.
`
`
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Wednesday, April 29, 2020 9:32 AM
`To: Smith, Bryan C. <smithbc@pepperlaw.com>; Trials <Trials@USPTO.GOV>
`Cc: INTEL-TELA-IPR@kirkland.com; todd.friedman@kirkland.com;
`greg.arovas@kirkland.com; chris.mizzo@kirkland.com; bao.nguyen@kirkland.com; Leinberg,
`Gunnar <leinberg@pepperlaw.com>; Gallo, Nicholas J. <gallon@pepperlaw.com>; Zappia,
`Andrew P. <zappiaa@pepperlaw.com>; McCarthy, Alison L. <mccartha@pepperlaw.com>;
`Ford, Carla <fordc@pepperlaw.com>; Harris, Jill M. <harrisjm@pepperlaw.com>
`Subject: [EXTERNAL] RE: IPR2019-01636 (334) and IPR2019-01637 (335) – Patent Owner
`Request for Conference Call
`
`Counsel,
`
`The panel has received Patent Owner’s request for authorization to
`file motions for additional discovery pursuant to 37 C.F.R. §§ 42.20
`and 42.51(b)(2) in each of the above-referenced IPRs. It appears to
`
`6
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`the panel that the request is similar to Patent Owner’s request in
`related cases IPR2019-01520, -01521, and -01522.
`
`If this is the case, the panel may allow the motion requested in this
`case on the same basis and for the same reasons articulated in those
`cases. We request that Patent Owner confirm that the request is for a
`motion for discovery of the same or similar documents, being made
`for the same or similar reasons, and that Petitioner indicate whether
`it opposes the discovery for the same reasons it opposed discovery in
`the related cases.
`
`If this is not the case, we request that the parties clarify the
`differences between this request and the request in the related cases
`before we schedule a call.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`From: Smith, Bryan C. <smithbc@pepperlaw.com>
`Sent: Monday, April 27, 2020 10:37 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: INTEL-TELA-IPR@kirkland.com; todd.friedman@kirkland.com;
`greg.arovas@kirkland.com; chris.mizzo@kirkland.com; bao.nguyen@kirkland.com; Leinberg,
`Gunnar <leinberg@pepperlaw.com>; Smith, Bryan C. <smithbc@pepperlaw.com>; Gallo,
`Nicholas J. <gallon@pepperlaw.com>; Zappia, Andrew P. <zappiaa@pepperlaw.com>;
`McCarthy, Alison L. <mccartha@pepperlaw.com>; Ford, Carla <fordc@pepperlaw.com>;
`Harris, Jill M. <harrisjm@pepperlaw.com>
`Subject: IPR2019-01636 (334) and IPR2019-01637 (335) – Patent Owner Request for
`Conference Call
`
`Your Honors,
`
`Patent Owner writes to request authorization to file motions for additional discovery
`pursuant to 37 C.F.R. §§ 42.20 and 42.51(b)(2) in each of the above-referenced IPRs.
`
`7
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`
`
`Patent Owner seeks additional discovery regarding non-public objective evidence, in
`Petitioner’s possession, relating to the non-obviousness of the claimed
`inventions. Patent Owner has conferred with Petitioner, but Petitioner has not
`consented to provide any of the requested discovery.
`
`In particular, Patent Owner seeks permission to use in these IPR proceedings certain
`specified documents related to Petitioner’s microprocessor or printed circuit board
`product lines (the “Subject Products”) identified in Tela’s Disclosure of Asserted Claims
`and Infringement Contentions with Respect to Plaintiff Intel Corp. relating to the
`challenged patents (“Infringement Contentions”), already produced or served in the
`matter captioned Intel Corporation v. Tela Innovations, Inc., Case No. 18-CV-02848-
`WHO (the “NDCA Action”). Specifically, Patent Owner seeks permission to use:
`
`
`1. The most current Infringement Contentions served by Patent Owner in the NDCA
`Action relating to the challenged patents and the documents cited therein; and
`2. Documents sufficient to show the sales of the Subject Products from first sale to the
`present, which information could be obtained from sales documents produced by
`Petitioner in the NDCA Action or by Petitioner’s provision of a sales summary chart.
`
`Patent Owner has conferred with counsel for Petitioner, and the parties would be
`available for a call with the Board on Wednesday April 29 from 1 pm to 5 pm EST and
`Thursday, April 30 from 1 pm to 3 pm and 4 pm to 5 pm EST. Patent Owner thanks the
`Board for its attention to this request for authorization.
`
`Respectfully,
`
`
`Bryan C. Smith
`Associate
`
`
`70 Linden Oaks | Suite 210
`Rochester, NY 14625-2804
`p: 585.270.2141 | f: 800.589.4728 | bio
`
`
`
`
`
`Effective July 1, 2020, Pepper Hamilton will combine with Troutman Sanders to become
`Troutman Pepper Hamilton Sanders LLP (Troutman Pepper). On that date, my email address will
`change, while my phone number will remain the same. My former Pepper Hamilton email
`address will work for a period of time after July 1. The new Troutman Pepper will offer expanded
`capabilities and practice strengths while continuing to deliver powerful solutions to clients’ legal
`and business issues with a hallmark focus on client care.
`
`8
`
`

`

`IPR2019-01636 (Patent 10,141,334 B2)
`IPR2019-01637 (Patent 10,141,335 B2)
`
`
`
`
`
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`9
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