Paper 8
`Trials@uspto.gov
`Date: May 14, 2020
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`Petitioner,
`v.
`CANON KABUSHIKI KAISHA,
`Patent Owner.
`
`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
` IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)1
`
`Before BART A. GERSTENBLITH, JOHN D. HAMANN, and
`JASON W. MELVIN, Administrative Patent Judges.
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Granting Patent Owner’s Request for Authorization
`to File a Motion for Additional Discovery
`37 C.F.R. § 42.5
`
`
`
`
`
`1 This Order addresses issues that are identical in each of the above-
`identified proceedings. The parties are not authorized to use this style
`heading without prior authorization.
`
`
`
`

`

`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`
`DISCUSSION
`Roku, Inc. (“Petitioner”) filed seven Petitions that collectively request
`inter partes review of U.S. Patent Nos. 8,078,767 B2; 8,346,986 B2;
`8,713,206 B2; 7,746,413 B2; and 7,810,130 B2. See IPR2020-00341,
`Paper 2 (“Pet.”); IPR2020-00342, Paper 2; IPR2020-00343, Paper 2;
`IPR2020-00355, Paper 2; IPR2020-00357, Paper 2; IPR2020-00358,
`Paper 2; IPR2020-00359, Paper 2. In each of the proceedings, Canon
`Kabushiki Kaisha, LLC (“Patent Owner”) filed a Preliminary Response.
`IPR2020-00341, Paper 6 (“Prelim. Resp.”); IPR2020-00342, Paper 6;
`IPR2020-00343, Paper 6; IPR2020-00355, Paper 6; IPR2020-00357,
`Paper 6; IPR2020-00358, Paper 6; IPR2020-00359, Paper 6.2
`One common issue in each proceeding is whether we should deny
`institution of inter partes review pursuant to our discretion under 35 U.S.C.
`§ 314(a). See Pet. 8–11 (addressing § 314(a)); Prelim. Resp. 3–13 (same);
`see also NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
`at 19–20 (PTAB Sept. 12, 2018) (precedential) (addressing discretionary
`denial under § 314(a)). After the Petitions and Preliminary Responses were
`filed, the Board designated, as precedential, the decision in Apple Inc. v.
`Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (“Fintiv”).
`Fintiv identifies a non-exclusive list of factors parties may consider
`addressing in the context of discretionary denial under § 314(a), particularly
`
`
`2 The Petitions and Preliminary Responses each address common issues
`discussed herein. Accordingly, citations are to the Petition and Preliminary
`Response in IPR2020-00341, unless otherwise indicated.
`
`2
`
`

`

`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`where there is a related, parallel district court action. Fintiv at 5–6. To aid
`in our consideration of this issue, we ordered additional briefing by the
`parties so that they could specifically address the Fintiv factors as well as
`any other factors relevant to our consideration of discretionary denial under
`§ 314(a). Paper 7 (Order Authorizing Preliminary Reply and Preliminary
`Sur-reply).
`In an email dated May 12, 2020, Patent Owner requests authorization
`to file a motion for additional discovery limited to Petitioner’s relationship
`with the TCL entities, which Petitioner identifies as privies.3 Petitioner
`opposes. On May 13, 2020, a conference call was held with counsel for the
`parties as well as Judges Gerstenblith, Hamann, and Melvin. During the
`conference call, Patent Owner explained that the additional discovery relates
`to the fifth Fintiv factor—“whether the petitioner and the defendant in the
`parallel proceeding are the same party.” 4 See Fintiv at 6. Patent Owner
`
`3 The Petition identifies the following TCL entities as privies of Petitioner:
`Shenzhen TCL New Technologies Co. Ltd. (“Shenzhen TCL”), TCL King
`Electrical Appliances (Huizhou) Co. Ltd. (“TCL King Huizhou”), TCL
`Corporation, TCL Holdings (BVI) Ltd., TTE Corporation, TTE Technology,
`Inc., TCL Electronics Holdings Ltd., TCL Industries Holdings (H.K.) Ltd.
`(“TCL Industries HK”), and TCL Industrial Holdings Co., Ltd. Pet. 3.
`Petitioner explains that “Shenzhen TCL is a subsidiary of TCL King
`Huizhou, which is a subsidiary of TCL Holdings (BVI) Ltd., which along
`with TTE Technology, Inc. are subsidiaries of TTE Corporation, which is a
`subsidiary of TCL Electronics Holdings Ltd., which is a subsidiary of TCL
`Industries HK, which is a subsidiary of TCL Industrial Holdings Co., Ltd.”
`Id. at 3–4. We refer to these privies collectively as “the TCL entities.”
`4 During the conference call, Patent Owner also contended that the
`additional discovery sought would pertain to Fintiv factor 4—“overlap
`
`3
`
`

`

`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`explained that the relationship between Petitioner and the TCL entities is not
`clear and that its additional discovery requests (i.e., three to five
`interrogatories) will be narrowly tailored to this specific issue.
`Petitioner raised two primary arguments in opposition. First, that it
`already identified the TCL entities as privies in the Petitions, specifically to
`avoid having a dispute about their relationship with Petitioner. Second,
`Petitioner explained that, in the related district court litigation, Patent Owner
`served discovery requests pertaining to TCL’s relationship with Petitioner,
`and Petitioner responded to those requests, although Petitioner is not a party
`to the district court litigation. Thus, Petitioner suggested that (1) if there was
`any relevant information on the subject, it would have been or will be
`produced in the district court litigation and (2) Patent Owner should seek to
`use the district court discovery in the present proceedings so that Petitioner
`need not respond to the same discovery requests again.
`Patent Owner argued that Petitioner’s identification of the TCL
`entities as privies does not resolve open questions regarding whether there is
`a more specific relationship between the TCL entities and Petitioner,
`particularly as such relationship may pertain to the fifth Fintiv factor.
`Additionally, Patent Owner’s counsel explained that it is not counsel for
`Patent Owner in the related district court litigation and is not aware of
`
`
`between issues raised in the petition and in the parallel proceeding” (Fintiv
`at 6). The relevance of Patent Owner’s request to that factor, however, is
`less clear.
`
`4
`
`

`

`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`information produced therein that addresses Patent Owner’s discovery
`concerns.
`In response to questioning from the panel, Petitioner did not agree to
`make its district court production available to Patent Owner for use in these
`proceedings. Thus, the question as to whether Patent Owner can use
`production from the district court litigation in these proceedings remains
`unresolved.
`In light of the discussion, which included several factors set forth in
`Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2020-
`00001, Paper 26 (PTAB Mar. 5, 2013) (precedential) (referred to as “the
`Garmin factors”), we authorized Patent Owner to file its requested motion
`for additional discovery and also authorized Petitioner to file a response
`thereto, as set forth in the Order below. See Patent Trial and Appeal Board
`Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 28,
`available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf
`(explaining that a party seeking authorization to file a motion for additional
`discovery should be prepared to address the Garmin factors during a
`conference call with the Board and that identifying real parties-in-interest is
`an issue for which “[n]arrowly focused requests for additional discovery . . .
`may, if appropriate, be permitted”). In the briefing, the parties may address,
`inter alia, (1) whether Petitioner produced discovery relevant to Patent
`Owner’s requests in the district court, (2) if so, whether Petitioner authorizes
`Patent Owner to use said discovery in these proceedings, and (3) what
`schedule should be applied to any discovery awarded.
`
`5
`
`

`

`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`
`We remind the parties that our decision herein is limited to
`authorizing briefing on Patent Owner’s requested motion and is not a
`decision on the motion itself.
`
`ORDER
`
`It is:
`ORDERED that Patent Owner may file a motion for additional
`discovery, not to exceed five (5) pages (exclusive of the discovery requests,
`which should be included in the motion), by May 15, 2020; and
`FURTHER ORDERED that Petitioner may file a response to Patent
`Owner’s motion, not to exceed five (5) pages, by May 19, 2020.
`
`
`6
`
`

`

`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`FOR PETITIONER:
`
`Scott A. McKeown
`Kyle K. Tsui
`Christopher M. Bonny
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`kyle.tsui@ropesgray.com
`christopher.bonny@ropesgray.com
`
`
`FOR PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`
`
`
`7
`
`