Paper 13
`Trials@uspto.gov
`Date: May 20, 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.
`MELVIN, Administrative Patent Judge.
`
`
`ORDER
`Granting In Part Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`1 This Order addresses issues that are identical in each of the above-
`identified proceedings. The parties are not authorized to use this caption
`without prior authorization.
`
`
`
`
`Trials@uspto.gov
`Date: May 20, 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.
`MELVIN, Administrative Patent Judge.
`
`
`ORDER
`Granting In Part Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`1 This Order addresses issues that are identical in each of the above-
`identified proceedings. The parties are not authorized to use this caption
`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
`We determined that the panel would benefit from additional briefing
`regarding the factors for discretionary denial under § 314(a), as identified in
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential). Paper 7. 2 Thus, we authorized a Preliminary Reply and
`Preliminary Sur-Reply. Id. at 4.
`Under Fintiv, we consider certain factors when a patent owner argues
`for discretionary denial in light of a district-court trial scheduled earlier than
`the projected deadline for the Board’s final written decision in a particular
`case. Fintiv, Paper 11 at 4–16. Patent Owner requested, and we granted,
`authorization for a motion seeking additional discovery regarding
`Petitioner’s relationship with parties in a related litigation, collectively
`identified as TCL or the TCL entities. Paper 8. Also, we granted Petitioner a
`response to Patent Owner’s motion. Id.
`Patent Owner’s Motion for Additional Discovery asserts that it seeks
`discovery relevant to Fintiv Factors 4 and 5. Paper 9, 1 (“Mot.”). Factors 4
`and 5 consider “overlap between issues raised in the petition and in the
`parallel proceeding” and “whether the petitioner and the defendant in the
`parallel proceeding are the same party,” respectively. Fintiv, Paper 11 at 12–
`14. Patent Owner argues that although Petitioner admits the TCL entities are
`Petitioner’s privies, it “does not reveal the full extent of that relationship.”
`Mot. 1–2. Thus, Patent Owner proposes five interrogatories. Mot. App’x A,
`
`
`2 Citations to the present proceedings are to IPR2020-00341. Corresponding
`papers appear in the record of each above-captioned proceeding.
`
`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)
`
`3–4. Proposed Interrogatory 1 seeks information about “the full nature of the
`privity relationship” between Petitioner and TCL. Id. at 3. Proposed
`Interrogatory 2 seeks information about “direction, control, participation,
`and/or involvement” Petitioner has had regarding TCL’s litigation positions.
`Id. Proposed Interrogatory 3 seeks identification of agreements between
`Petitioner and TCL concerning the litigation. Id. at 4. Proposed
`Interrogatory 4 seeks identification and description in detail of all discovery
`responses in the litigation that Petitioner contends relates to “direction,
`control, funding, participation, and/or involvement” by Petitioner in the
`litigation. Id. Proposed Interrogatory 5 seeks identification and description in
`detail of all discovery responses in the litigation that Petitioner contends
`relates to the same topics as Proposed Interrogatory 4. Id.
`Patent Owner addresses factors identified in Garmin International,
`Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 26 (PTAB
`Mar. 5, 2013) (precedential). According to Patent Owner, Petitioner’s
`statements in the Petition and the related litigation “suggest[] a close
`relationship exists between TCL and Roku.” Mot. 2–3. Patent Owner
`reasons that evidence supports that there is more than a possibility and mere
`allegation of the additional discovery uncovering something useful. Id.
`Petitioner contests such a conclusion, arguing that the “requested discovery
`is neither useful nor relevant to the Fintiv analysis.” Paper 11 (“Opp.”), 2.
`Petitioner argues that Fintiv Factor 4 involves comparing IPR issues
`with litigation issues and therefore does not relate to any relationship
`between the parties. Id. We agree. Patent Owner has made no showing that
`
`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)
`
`the discovery it seeks would have any bearing on the degree of “overlap
`between issues raised in the petition and in the parallel proceeding.” See
`Fintiv, Paper 11 at 12–13.
`As to Fintiv Factor 5, Petitioner argues that “TCL and Roku are
`plainly not the ‘same party.’” Opp. 3. Rather, according to Petitioner, “Roku
`and TCL are admitted privies, and discovery into the precise contours of that
`relationship will never transform Roku into one of its customers.” Id.
`Petitioner’s analysis, however, is insufficient. Although Fintiv uses “same
`party” in the heading of Factor 5, the discussion of that factor repeatedly
`considers whether an IPR petitioner and a litigation party are “unrelated.”
`Fintiv, Paper 11 at 13–14. Thus, our analysis considers more than the simple
`identities of the parties. We determine that the relationship between
`Petitioner and TCL likely impacts our analysis of Fintiv Factor 5. We further
`determine that Patent Owner has sufficiently supported that the discovery
`sought will produce something useful. See Mot. 2–3.
`Patent Owner asserts that none of the proposed interrogatories seeks a
`litigation position because each relates only to the relationship between
`Petitioner and the litigation defendants, not the positions taken in litigation.
`Id. at 3. Patent Owner asserts that it could not generate the requested
`discovery itself, as Patent Owner’s counsel in this proceeding does not have
`access to material already produced in the related litigation. Id. at 4. And
`Patent Owner asserts that the instructions are easily understandable. Id. at 5.
`Petitioner does not contest any of those assertions.
`
`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)
`
`
`Patent Owner asserts that the proposed interrogatories are not overly
`burdensome, “especially since Roku’s counsel has already acknowledged
`Roku has collected materials relevant to the requests.” Id. Petitioner
`challenges that assertion, arguing that the proposed interrogatories are too
`broad because they seek a full range of possible information, without
`limiting the scope to a genuine need. Opp. 4–5. We determine that Proposed
`Interrogatories 1 and 2 sufficiently explore the relevant issue. Additionally
`granting Proposed Interrogatories 3, 4, or 5 would unnecessarily burden
`Petitioner with duplicative and vague requests unlikely to benefit our
`analysis. In particular, Proposed Interrogatory 1 focuses on the “nature of the
`privity relationship” and will allow us to evaluate the degree to which
`Petitioner and TCL are “unrelated” for Fintiv Factor 5. Proposed
`Interrogatory 2, while largely overlapping Proposed Interrogatory 1, ensures
`a more full understanding of the relationship, by including Petitioner’s actual
`involvement in the relevant litigation. But the existence of agreements
`between Petitioner and the TCL entities (Proposed Interrogatory 3) is
`already captured in the nature of the privity relationship, and would
`unnecessarily extend the discovery into details only marginally relevant to
`our current inquiry. Proposed Interrogatories 4 and 5, by seeking
`identification of relevant discovery responses and document production from
`the related litigation, would impose a large burden on Petitioner while not
`expanding the relevant area of substance. Moreover, given the short timeline
`here for discovery before our analysis of the Fintiv factors, we determine
`Proposed Interrogatories 3, 4, and 5 are overly burdensome.
`
`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)
`
`
`For the above reasons, we grant Patent Owner’s motion as to
`Proposed Interrogatories 1 and 2, and deny the motion as to Proposed
`Interrogatories 3, 4, and 5.
`Patent Owner proposes that Petitioner’s interrogatory responses be
`due by May 28, 2020. Petitioner complains that a due date falling after
`Petitioner’s Preliminary Reply would prevent Petitioner from addressing the
`evidence in the Preliminary Reply. We agree with Petitioner that it should
`have an opportunity to address any responses in its Preliminary Reply.
`Because the Order authorizing the Preliminary Reply was entered May 13,
`2020, and allowed ten calendar days for the Preliminary Reply, that paper is
`currently due May 26, 2020. 3 We determine that coordinating Petitioner’s
`interrogatory responses with its Preliminary Reply does not impose undue
`burden on Petitioner and allows Petitioner to address its responses in the
`paper.
`
`ORDER
`
`It is:
`ORDERED that Patent Owner’s Motion for Additional Discovery
`(Paper 9) is granted as to Interrogatories 1 and 2, and denied in all other
`respects; and
`FURTHER ORDERED that Petitioner must serve its responses to
`Interrogatories 1 and 2 by May 26, 2020.
`
`
`
`3 As May 23, 2020, falls on a Saturday, and Monday, May 25, 2020, is a
`holiday, the actual due date is May 26, 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
`Victor Cheung
`Christopher Bonny
`Kyle Tsui
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`victor.cheung@ropesgray.com
`christopher.bonny@ropesgray.com
`kyle.tsui@ropesgray.com
`
`
`FOR PATENT OWNER:
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
