UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`ROKU, INC.
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`Petitioner,
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`v.
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`CANON KABUSHIKI KAISHA
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`Patent Owner.
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`____________
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`Case IPR2020-00343
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`U.S. Patent No. 8,713,206
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`____________
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`PETITIONER’S RESPONSES TO PATENT OWNER’S
`INTERROGATORIES (NOS. 1-2)
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`Roku Exhibit 1040
`Roku, Inc. v. Canon Kabushiki Kaisha
`Page 00001
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`ROKU, INC.
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`Petitioner,
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`v.
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`CANON KABUSHIKI KAISHA
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`Patent Owner.
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`____________
`
`Case IPR2020-00343
`
`U.S. Patent No. 8,713,206
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`____________
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`PETITIONER’S RESPONSES TO PATENT OWNER’S
`INTERROGATORIES (NOS. 1-2)
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`Roku Exhibit 1040
`Roku, Inc. v. Canon Kabushiki Kaisha
`Page 00001
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`Pursuant to Rules 26 and 33 of the Federal Rules of Procedure, Petitioner
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`Roku, Inc. (“Petitioner”) hereby objects and provides the following responses to
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`Patent Owner Canon Kabushiki Kaisha’s (“Patent Owner”) Interrogatories to
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`Petitioner (Nos. 1-2) as follows:
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`Petitioner responds to Patent Owner’s Interrogatories as it interprets and
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`understands each Interrogatory set forth therein. If Patent Owner subsequently
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`asserts an interpretation of any Interrogatory that differs from Petitioner’s
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`understanding of that Interrogatory, Petitioner reserves the right to supplement,
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`revise, amend, or modify its objections and/or responses.
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`These answers are made solely for the purpose of IPR2020-00343. No
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`incidental or implied admissions are intended by the answers herein. Petitioner’s
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`responses to these Interrogatories do not constitute admissions relative to the
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`existence of any documents or information, to the relevance or admissibility of any
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`documents or information, or to the truth or accuracy of any statement or
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`characterization contained in Patent Owner’s requests. The fact that Petitioner has
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`answered part or all of any Interrogatory is not intended to be, and shall not be
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`construed to be, a waiver by Petitioner of any part of any objection to any
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`Interrogatory. All objections as to relevance, authenticity, or admissibility of any
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`document are expressly reserved.
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`1
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`Roku Exhibit 1040
`Page 00002
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`GENERAL OBJECTIONS
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`1.
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`Petitioner objects to each Interrogatory to the extent that it is
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`inconsistent with, or imposes obligations beyond those required by, the Federal
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`Rules of Civil Procedure, 35 U.S.C. § 316(a)(5), 37 C.F.R. § 42.51, or the Board’s
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`Order Granting In Part Patent Owner’s Motion for Additional Discovery.
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`2.
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`Petitioner objects to these Interrogatories as overly broad, unduly
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`burdensome, and not proportional to the needs of the case to the extent that they
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`are not within the scope of permissible discovery as set forth in the Federal Rules
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`of Civil Procedure, 35 U.S.C. § 316(a)(5), 37 C.F.R. § 42.51, or the Board’s Order
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`Granting In Part Patent Owner’s Motion for Additional Discovery.
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`3.
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`Petitioner objects to these Interrogatories to the extent that the
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`information requested is not currently within the possession, custody, or control of
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`Petitioner.
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`4.
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`Petitioner objects to these Interrogatories to the extent that they call
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`for disclosure of information that is not ascertainable by means of a reasonably
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`diligent search, including without limitation information that is not maintained by
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`Petitioner in the normal course of business or that is no longer maintained by
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`Petitioner.
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`2
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`Roku Exhibit 1040
`Page 00003
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`5.
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`Petitioner objects to these Interrogatories to the extent that they seek
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`to compel Petitioner to generate or create information and/or documents that do not
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`already exist.
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`6.
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`Petitioner objects to these Interrogatories to the extent that they are
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`harassing or would lead to unnecessary delay or needless increase in the cost of
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`this action.
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`7.
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`Petitioner objects to each Interrogatory to the extent that it seeks
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`information protected from discovery by the attorney-client privilege, the work-
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`product doctrine, the common-interest privilege, and/or any other applicable
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`privilege, immunity, or protection. Nothing contained in Petitioner’s responses is
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`intended to be, or in any way shall be deemed, a waiver of any such applicable
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`privilege or doctrine.
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`8.
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`Petitioner objects to these Interrogatories on the grounds that they are
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`vague, ambiguous, unduly burdensome, and not proportional to the needs of the
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`case to the extent that they require Petitioner to construe, interpret, or define
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`unclear terms in these Interrogatories.
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`9.
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`Defendants’ agreement to produce any category of information or
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`documents is not a representation that any such documents or information in that
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`category actually exist in Defendants’ possession, custody, or control, or can be
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`3
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`Roku Exhibit 1040
`Page 00004
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`located through a reasonable search, or that such documents or information are
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`relevant or proportional to the needs of the case.
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`10. Petitioner objects to these Interrogatories to the extent that they
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`purport to require Petitioner to anticipate Patent Owner’s future claims or defenses
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`and/or other developments in this action. Petitioner provides these responses to
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`Patent Owner’s Interrogatories based solely on the information presently known to
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`it. Petitioner’s responses herein are given without prejudice to Petitioner’s right to
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`amend or supplement in accordance with Fed. R. Civ. P. 26(e).
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`OBJECTIONS TO DEFINITIONS AND INSTRUCTIONS
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`1.
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`Petitioner objects to Patent Owner’s Instructions to the extent they
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`purport to create requirements or obligations beyond the requirements set forth in
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`the Federal Rules of Civil Procedure, 35 U.S.C. § 316(a)(5), 37 C.F.R. § 42.51, or
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`the Board’s Order Granting In Part Patent Owner’s Motion for Additional
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`Discovery. Petitioner will not comply with any Instructions that purport to create
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`or impose obligations different from, or greater than, those required by the
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`foregoing rules or orders.
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`2.
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`Petitioner objects to the Instructions to the extent that they seek
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`information protected from disclosure by the attorney-client privilege, work-
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`product doctrine, common-interest privilege and/or any other applicable privilege
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`or exemption.
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`4
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`Roku Exhibit 1040
`Page 00005
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`3.
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`Petitioner objects to the definition of “You,” and “Your” as overly
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`broad to the extent that Patent Owner includes within its definition persons or
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`entities that are separate and distinct from Petitioner and that have not been made a
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`party to this action. Petitioner interprets the terms “You” and “Your” as referring
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`to Petitioner, as that term is defined above.
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`4.
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`Petitioner objects to Patent Owner’s definitions to the extent they
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`relate only to Interrogatories that the Board did not authorize in its Order Granting
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`In Part Patent Owner’s Motion for Additional Discovery.
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`5
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`Roku Exhibit 1040
`Page 00006
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`RESPONSES TO INTERROGATORIES
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`Subject to and without waiving its General Objections and Objections to
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`Definitions and Instructions, Petitioner’s responses are based upon current
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`information and belief as a result of reasonable searches and inquiries:
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`INTERROGATORY NO. 1
`Describe and identify in detail the full nature of the privity relationship that
`You have with each of the TCL entities that You identify in Your Petition (see
`Paper 2 at 3-4), including without limitation the scope of such relationship in
`connection with the TCL Litigation, in connection with the challenged patent, and
`in connection with this proceeding (IPR2020-00343).
`RESPONSE TO INTERROGATORY NO. 1
`Petitioner incorporates by reference the General Objections and the
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`Objections to Definitions and Instructions set forth above.
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`Petitioner objects to this Interrogatory to the extent that it seeks information
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`protected from discovery by the attorney-client privilege, the work-product
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`doctrine, the common-interest privilege, and/or any other applicable privilege,
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`immunity, or protection, and all applicable non-disclosure or confidentiality
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`agreements. Petitioner further objects that terms or phrases are vague, ambiguous,
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`overly broad, unduly burdensome, and/or undefined in the context of this
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`Interrogatory, including the terms or phrases “full nature of the privity
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`relationship,” “scope of such relationship,” “in connection with the TCL
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`Litigation,” “in connection with the challenged patent,” and “in connection with
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`6
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`Roku Exhibit 1040
`Page 00007
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`this proceeding.” Petitioner further objects to this Interrogatory as not within the
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`scope of discoverable material and not relevant to any claim or defense in this case.
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`Petitioner further objects to this Interrogatory as requesting information that
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`is not known to Petitioner and/or cannot be located through a reasonable search at
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`the level of specificity requested by the Interrogatory. Petitioner further objects to
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`this Interrogatory to the extent it seeks to compel Petitioner to generate or create
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`information and/or documents that do not already exist.
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`Subject to and without waiving these objections, Petitioner responds as
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`follows:
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`7
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`Roku Exhibit 1040
`Page 00008
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`8
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`Roku Exhibit 1040
`Page 00009
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`Roku Exhibit 1040
`Page 00009
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`Discovery and investigation of the facts relating to this Interrogatory are
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`ongoing. Petitioner expressly reserves the right to supplement and/or amend its
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`response to this Interrogatory at an appropriate time and as its investigation
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`continues in accordance with Fed. R. Civ. P. 26(e).
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`9
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`Roku Exhibit 1040
`Page 00010
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`INTERROGATORY NO. 2
`Describe and identify in detail any and all direction, control, participation,
`and/or involvement You have had regarding any and all positions taken by TCL in
`the TCL Litigation concerning the challenged patent, including without limitation,
`information sufficient to show any and all of Your involvement, direction, control,
`and/or participation concerning positions in the TCL Litigation relating to the
`validity/invalidity, claim constructions, and scope concerning the challenged
`patent, such as the identification and use of any prior art and positions taken
`concerning that prior art and the challenged patent set forth in any of TCL’s
`invalidity contentions in the TCL Litigation (see, e.g., Exs. 2002-2007, 2010) and
`any claim construction positions set forth in any claim construction briefs and
`motions in the TCL Litigation.
`RESPONSE TO INTERROGATORY NO. 2
`Petitioner incorporates by reference the General Objections and the
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`Objections to Definitions and Instructions set forth above.
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`Petitioner objects to this Interrogatory to the extent that it seeks information
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`protected from discovery by the attorney-client privilege, the work-product
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`doctrine, the common-interest privilege, and/or any other applicable privilege,
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`immunity, or protection, and all applicable non-disclosure or confidentiality
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`agreements. Petitioner further objects that terms or phrases are vague, ambiguous,
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`overly broad, unduly burdensome, and/or undefined in the context of this
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`Interrogatory, including the terms or phrases “direction, control, participation,
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`and/or involvement,” “involvement, direction, control, and/or participation,”
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`“positions taken by TCL in the TCL Litigation concerning the challenging patent,”
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`and “positions in the TCL Litigation relating to the validity/invalidity, claim
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`constructions, and scope concerning the challenged patent.” Petitioner further
`10
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`Roku Exhibit 1040
`Page 00011
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`objects to the term “any and all” as vague, ambiguous, unduly burdensome, and
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`not proportional to the needs of this case. Petitioner further objects to this
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`Interrogatory as not within the scope of discoverable material and not relevant to
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`any claim or defense in this case.
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`Petitioner further objects to this Interrogatory as requesting information that
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`is not known to Petitioner and/or cannot be located through a reasonable search at
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`the level of specificity requested by the Interrogatory. Petitioner further objects to
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`this Interrogatory to the extent it seeks to compel Petitioner to generate or create
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`information and/or documents that do not already exist.
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`Subject to and without waiving these objections, Petitioner responds as
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`follows:
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`11
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`Roku Exhibit 1040
`Page 00012
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`Discovery and investigation of the facts relating to this Interrogatory are
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`ongoing. Petitioner expressly reserves the right to supplement and/or amend its
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`response to this Interrogatory at an appropriate time and as its investigation
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`continues in accordance with Fed. R. Civ. P. 26(e).
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`Dated: May 26, 2020
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`Respectfully submitted,
`ROPES & GRAY LLP
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`/Scott A. McKeown/
`Scott A. McKeown
`Reg. No. 42,866
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`12
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`Roku Exhibit 1040
`Page 00013
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`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing PETITIONER’S
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`RESPONSES TO PATENT OWNER’S INTERROGATORIES (NOS. 1-2) was
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`served via electronic mail to the following attorneys of record for the Patent Owner
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`listed below:
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`Joseph E. Palys (Reg. No. 46,508)
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: PH-Roku-Canon-IPR@paulhastings.com
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`Naveen Modi (Reg. No. 46,224)
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: PH-Roku-Canon-IPR@paulhastings.com
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`/Crena Pacheco/
`Crena Pacheco
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`Dated: May 26, 2020
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`Roku Exhibit 1040
`Page 00014
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