Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Date: July 18, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`DDC TECHNOLOGY, LLC,
`Patent Owner.
`
`IPR2023-00707 (Patent 9,420,075 B2)
`IPR2023-00708 (Patent 9,811,184 B2)
`IPR2023-00709 (Patent 10,528,199 B2)
` IPR2023-00710 (Patent 11,093,000 B2)
` IPR2023-00711 (Patent 11,093,001 B1)1
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, Vice Chief Administrative Patent
`Judge, PATRICK M. BOUCHER, SHEILA F. MCSHANE, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`DIRBA, Administrative Patent Judge.
`
`
`ORDER
`Denying Patent Owner’s Motion for Additional Discovery
`35 U.S.C. § 314
`
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be docketed in each of the
`listed proceedings. Except as expressly authorized by the Board, the parties
`may not use this caption.
`
`
`
`

`

`IPR2023-00707 (Patent 9,420,075 B2)
`IPR2023-00708 (Patent 9,811,184 B2)
`IPR2023-00709 (Patent 10,528,199 B2)
`IPR2023-00710 (Patent 11,093,000 B2)
`IPR2023-00711 (Patent 11,093,001 B1)
`
`
`On June 5, 2023, DDC Technology, LLC (“Patent Owner”) emailed
`the Board to request authorization to file a motion for additional discovery
`pursuant to 37 C.F.R. § 42.51(b)(2) in these five proceedings, noting that
`Google LLC (“Petitioner”) opposed Patent Owner’s request. See Ex. 1014. 2
`On June 13, 2023, we held a conference call with the parties. See
`Ex. 1013 (transcript). At that time, Patent Owner sought documents related
`to communications and agreements between Petitioner and Mattel, Inc.,
`MerchSource LLC, Unofficial Cardboard, Inc., and/or Orora Packaging
`Solutions (“OPS”). See id.; see also Ex. 1014, 2 (listing requests for
`production). Patent Owner argued that the requested documents would show
`that Petitioner is “precluded by the one year time bar from proceeding with
`these petitions.” E.g., Ex. 1013, 11:22–12:15. After extensive discussion
`with the parties, we determined that Patent Owner would not satisfy the first
`factor of the Garmin test “based on the information . . . provided on this call
`today,” and consequently, “the Board would not grant [Patent Owner’s
`requested] motion for additional discovery.” Id. at 37:10–15; see Garmin
`Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (PTAB
`Mar. 5, 2013) (precedential) (cited in Ex. 3001 (email scheduling conference
`call)). Nevertheless, we authorized Patent Owner to file a motion for
`additional discovery “on these matters” in each of the five proceedings on or
`before June 27, 2023. Id. at 37:22–38:24.
`
`
`2 We cite to papers and exhibits in IPR2023-00707. Substantially similar
`papers and exhibits were also filed in each of the other proceedings.
`
`2
`
`

`

`IPR2023-00707 (Patent 9,420,075 B2)
`IPR2023-00708 (Patent 9,811,184 B2)
`IPR2023-00709 (Patent 10,528,199 B2)
`IPR2023-00710 (Patent 11,093,000 B2)
`IPR2023-00711 (Patent 11,093,001 B1)
`
`
`Patent Owner thereafter filed a motion in each of these proceedings.
`Paper 8 (“Motion” or “Mot.”).3 In the Motion, Patent Owner contends that
`“Garmin factor one is satisfied at least as to OPS” because Patent Owner is
`in possession of evidence “strongly suggesting” that Petitioner intentionally
`omitted OPS as “a real party in interest or privity” to “significantly impact
`the Fintiv[4] analysis.” Id. at 1. From this, Patent Owner asserts that “the
`requested discovery is warranted.” Id. Patent Owner also states that, “to the
`extent the Board denies additional discovery at this time, [Patent Owner]
`requests the limited relief of compelling [Petitioner] to permit use of
`[Petitioner’s] documents produced in prior litigations concerning
`infringement of the patents subject to these IPR proceedings.” Id. at 3; see
`id. at 2–3 (indicating that those documents are subject to at least two district
`court protective orders).
`Petitioner timely filed an opposition in each proceeding arguing that
`Patent Owner’s motion fails both on procedural grounds and on the merits.
`
`
`3 Patent Owner originally filed a motion in only two of the proceedings
`(IPR2023-00707 and IPR2023-00708), but a footnote in those documents
`indicated that Patent Owner misunderstood the Board’s oral order. See
`Mot. 1 n.1. On June 29, 2023, the Board emailed the parties to authorize
`Patent Owner to file a substantially similar document in the other three
`proceedings by a revised deadline (Ex. 3002), and Patent Owner filed
`motions in the remaining proceedings before that deadline. Thus, in this
`Order, we consider the motions filed in all five proceedings.
`4 In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20,
`2020) (precedential), the Board identified factors that it will address when
`deciding whether or not to exercise discretion to deny institution considering
`the status of co-pending litigation.
`
`3
`
`

`

`IPR2023-00707 (Patent 9,420,075 B2)
`IPR2023-00708 (Patent 9,811,184 B2)
`IPR2023-00709 (Patent 10,528,199 B2)
`IPR2023-00710 (Patent 11,093,000 B2)
`IPR2023-00711 (Patent 11,093,001 B1)
`
`Paper 9 (“Opp.”). Petitioner first asserts that Patent Owner fails to “make
`any specific discovery request as required by the Board’s rules.” Id. at 1
`(citing 37 C.F.R. § 42.22(a)(1)); see also id. at 3. Petitioner also contends
`that Patent Owner’s motion “improperly raises a new, sweeping request for
`cross-use of all of Petitioner’s documents from all prior district court
`litigations, for which the Board did not grant authorization.” Id. at 1; see
`also id. at 3–4. As for the merits, Petitioner argues that Patent Owner fails
`to address most of the companies discussed during the conference with the
`Board (id. at 5–6), and regarding OPS, Patent Owner fails to explain its
`theory or provide any evidence to support it, which “is simply not enough to
`satisfy either 37 C.F.R. § 42.22(a)(2) or Garmin factor one” (id. at 6–7).
`No reply was authorized. See Ex. 1013, 38:20–21.
`
`LEGAL STANDARD
`A motion “must include: (1) A statement of the precise relief
`requested; and (2) A full statement of the reasons for the relief requested,
`including a detailed explanation of the significance of the evidence including
`material facts, and the governing law, rules, and precedent.” 37 C.F.R.
`§ 42.22(a). In addition, the “moving party has the burden of proof to
`establish that it is entitled to the requested relief.” Id. § 42.20(c).
`When requesting additional discovery in an inter partes review, a
`party must demonstrate that “such additional discovery is in the interests of
`justice.” 37 C.F.R. § 42.51(b)(2)(i). In a motion for additional discovery,
`the Board considers a number of factors, which are often referred to as the
`
`4
`
`

`

`IPR2023-00707 (Patent 9,420,075 B2)
`IPR2023-00708 (Patent 9,811,184 B2)
`IPR2023-00709 (Patent 10,528,199 B2)
`IPR2023-00710 (Patent 11,093,000 B2)
`IPR2023-00711 (Patent 11,093,001 B1)
`
`Garmin factors. See Garmin, IPR2012-00001, Paper 26 at 5–7. Garmin
`factor 1 is of particular relevance to this Order:
`1. 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.
`Id. at 6.
`
`ANALYSIS
`Patent Owner’s motion requests two types of relief: (1) additional
`discovery from Petitioner and (2) in the alternative, an order instructing
`Petitioner to agree that Patent Owner can use, in these proceedings, the
`documents previously provided by Petitioner to Patent Owner but which are
`subject to district court protective orders. For the reasons below, we deny
`each of these requests both on procedural grounds and on the merits.
`
`Additional Discovery
`First, we deny Patent Owner’s Motion because it fails to identify “the
`precise relief requested,” as required by 37 C.F.R. § 42.22(a). See Opp. 3.
`In its June 5 email to the Board, Patent Owner sought documents relating to
`Mattel, MerchSource, Unofficial Cardboard, and/or OPS, and it listed seven
`proposed requests for production. See Ex. 1014. The Motion, however,
`includes no reference to any requests for production and fails to otherwise
`identify the discovery sought by Patent Owner. See Mot.
`
`5
`
`

`

`IPR2023-00707 (Patent 9,420,075 B2)
`IPR2023-00708 (Patent 9,811,184 B2)
`IPR2023-00709 (Patent 10,528,199 B2)
`IPR2023-00710 (Patent 11,093,000 B2)
`IPR2023-00711 (Patent 11,093,001 B1)
`
`
`One might assume that the Motion continues to seek the documents
`identified by Patent Owner’s June 5 email (cf. Mot. 2 (citing Ex. 2002)), but
`such an assumption is undercut by the arguments presented in the Motion.
`Where the June 5 email requests documents relating to any one of four
`companies (Ex. 1014), the Motion only briefly addresses two of them (see
`Mot. 1 (OPS), 2 n.1 (MerchSource)). One of those two companies
`(MerchSource) is only referenced in passing in a footnote (id. at 2 n.1), and
`Patent Owner does not explain why production of documents related to it
`would be in the interest of justice. Ultimately, it is unclear what additional
`discovery is sought by Patent Owner at this stage.
`At most, Patent Owner’s Motion seeks some documents relating to
`OPS, 5 but even if Patent Owner had sufficiently identified those documents,
`it still would fail to show that this additional discovery is in the interest of
`justice. 6
`
`
`5 The Motion fails to provide any basis for authorizing discovery of
`documents related to Mattel, MerchSource, and/or Unofficial Cardboard.
`6 Also, to the extent the Motion can be interpreted as a request for the OPS-
`related documents identified in Patent Owner’s original requests (see
`Ex. 2002; Ex. 1014), the request would also fail under Garmin factor 5 as
`overly burdensome and not “tailored according to a genuine need.” Garmin,
`IPR2012-00001, Paper 26 at 7, 14. The Motion fails to substantively
`address this factor, instead arguing that neither Petitioner nor the Board to
`prove the opposite. See Mot. 2. But see Ex. 1013, 31:24–32:4 (Board
`warning Patent Owner that it has the burden on its motion). In addition,
`Patent Owner’s emailed requests for production (on their face) are
`overbroad, unnecessarily burdensome, and not tailored to a genuine need.
`For instance, they seek any “[d]ocuments constituting or discussing any
`contracts, agreements, or business arrangements between [Petitioner] and . . .
`
`6
`
`

`

`IPR2023-00707 (Patent 9,420,075 B2)
`IPR2023-00708 (Patent 9,811,184 B2)
`IPR2023-00709 (Patent 10,528,199 B2)
`IPR2023-00710 (Patent 11,093,000 B2)
`IPR2023-00711 (Patent 11,093,001 B1)
`
`
`As to Garmin factor 1, Patent Owner does not provide evidence or
`reasoning “tending to show beyond speculation that the information to be
`discovered will be ‘useful.’” Garmin, IPR2012-00001, Paper 26 at 8. In the
`Motion, Patent Owner simply states:
`Patent Owner has obtained additional evidence strongly
`suggesting that Petitioner Google intentionally omitted Orora
`Packaging Solutions (“OPS”) as a real party in interest or privy
`in these proceedings in order to avoid acknowledging the
`scheduling order in co-pending litigation – DDC Technology,
`LLC v. Orora Packaging Solutions, Case No. 3:22-cv-01263
`(N.D. Tex.), a case that originally included Google before it
`was severed and transferred to the Northern District of
`California (the “Texas Case”) – which would significantly
`impact the Fintiv analysis. Such a finding would amount to
`Google having “purposefully omitted [OPS] to gain some
`advantage,” which would warrant dismissal of the Petitions. See
`SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734,
`Paper 11 (PTAB Oct. 6, 2020) (precedential) at 19.
`Accordingly, DDC submits that Garmin factor one is
`satisfied at least as to OPS, and thus the requested discovery is
`warranted.
`Mot. 1. This is insufficient to satisfy Garmin factor 1.
`
`
`OPS,” and all communications between Petitioner and OPS “that concern or
`relate to demands or requests for indemnification regarding any product . . .
`or legal proceeding.” Ex. 1014, 2. We discern no sufficient reason why
`such extensive discovery is justified to support Patent Owner’s theory that
`Petitioner intentionally omitted OPS to significantly impact the Fintiv
`analysis. See Mot. 1. It bears restating that only limited discovery is
`permitted in an inter partes review. See Garmin, IPR2012-00001, Paper 26
`at 5 (“[I]n inter partes review, discovery is limited as compared to that
`available in district court litigation.”); see also id. at 5–6 (explaining the
`approach to discovery).
`
`7
`
`

`

`IPR2023-00707 (Patent 9,420,075 B2)
`IPR2023-00708 (Patent 9,811,184 B2)
`IPR2023-00709 (Patent 10,528,199 B2)
`IPR2023-00710 (Patent 11,093,000 B2)
`IPR2023-00711 (Patent 11,093,001 B1)
`
`
`In particular, even assuming that the evidence sought would be useful
`(e.g., because it would weigh in favor of a discretionary denial under
`Fintiv),7 Patent Owner fails to provide evidence or rationale to support its
`assertion that the evidence exists. Patent Owner says that it has “additional
`evidence” that supports its theory, but fails to provide anything more than
`this blanket assertion. Mot. 1. Patent Owner does not include the
`“additional evidence” as an exhibit to its Motion, and it does not even
`provide a vague description of it. As a result, we are unable to evaluate the
`merit of Patent Owner’s arguments. Ultimately, Patent Owner provides only
`a “mere allegation” that something useful will be uncovered, which is
`“insufficient to demonstrate that the requested discovery is necessary in the
`interest of justice.” Garmin, IPR2012-00001, Paper 26 at 6; see also, e.g.,
`id. at 11 (noting that movant failed to present “a threshold amount of
`evidence or reasoning” to support its requests for discovery).
`Later in the Motion, Patent Owner suggests that protective orders
`entered by district courts prevent Patent Owner from introducing the
`necessary evidence. See Mot. 2–4. Patent Owner never identifies the
`relevant protective orders, but even if Patent Owner accurately characterizes
`the situation, this does not excuse the failure to substantiate its Motion. “In
`cases where a district court protective order includes a Restricted Use
`Provision, the Board has advised the parties to negotiate a waiver of the
`
`
`7 Incidentally, we are not persuaded that the evidence would be useful. We
`note that the district court has stayed the “Texas case” in view of a
`settlement between the parties to that case. See DDC Technology LLC v.
`Landsberg Orora, Civ. Action No. 3:22-cv-01263, Dkt #150 (N.D. Tex.).
`
`8
`
`

`

`IPR2023-00707 (Patent 9,420,075 B2)
`IPR2023-00708 (Patent 9,811,184 B2)
`IPR2023-00709 (Patent 10,528,199 B2)
`IPR2023-00710 (Patent 11,093,000 B2)
`IPR2023-00711 (Patent 11,093,001 B1)
`
`Restricted Use Provision for the requested information or modify the
`protective order in the district court.” Samsung Elecs. Co., Ltd v. Acorn
`Semi, LLC, IPR2020-01183, Paper 24 at 3 (PTAB Mar. 30, 2021). The
`district court clearly has authority to modify its own protective order, and
`Patent Owner identifies no authority indicating that the Board can (or
`should) do so.
`In addition, given the context of these proceedings, we question Patent
`Owner’s assertions regarding the evidence, to the extent it exists. Patent
`Owner originally argued that Petitioner’s relationship with Mattel,
`MerchSource, Unofficial Cardboard, and OPS resulted in a time bar under
`35 U.S.C. § 315(b) (see Exs. 1013, 1014), but now, Patent Owner argues
`that Petitioner’s relationship with OPS affects the analysis of whether review
`should be discretionarily denied under Fintiv (see Mot.). These are two
`different theories – both of which we are not persuaded by. The Motion
`presents insufficient evidence or rationale to support any of Patent Owner’s
`theories. As a result, Patent Owner assertions are tantamount to a “fishing
`expedition,” rather than a request for specific documents to support a
`particular substantive contention. See Garmin, IPR2012-00001, Paper 26 at
`7–8.
`
`Order Regarding Documents in Patent Owner’s Possession
`We deny Patent Owner request for an order requiring Petitioner to
`consent to Patent Owner’s use of all documents produced by Petitioner in
`district court litigations (see Mot. 3–4) for at least two reasons.
`
`9
`
`

`

`IPR2023-00707 (Patent 9,420,075 B2)
`IPR2023-00708 (Patent 9,811,184 B2)
`IPR2023-00709 (Patent 10,528,199 B2)
`IPR2023-00710 (Patent 11,093,000 B2)
`IPR2023-00711 (Patent 11,093,001 B1)
`
`
`First, the request is procedurally improper. We authorized Patent
`Owner to file a motion for additional discovery pursuant to 37 C.F.R.
`§ 42.51, and Patent Owner neither requested nor received authorization to
`include a request for this type of relief in its motion.
`Second, the request is vague and overbroad because Patent Owner
`seeks an order that applies to any and all documents previously produced by
`Petitioner. We are not persuaded that a blanket consent is required or
`appropriate. Patent Owner admits that Petitioner agreed to consider requests
`“on a case-by-case basis,” and Patent Owner fails to explain (and we cannot
`discern) any problem with Petitioner’s approach. Mot. 3–4 n.3; see also
`Opp. 2. Patent Owner does not articulate any specific requests. See Mot.;
`Opp. 4.
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Motions (Paper 8) are denied.
`
`10
`
`

`

`IPR2023-00707 (Patent 9,420,075 B2)
`IPR2023-00708 (Patent 9,811,184 B2)
`IPR2023-00709 (Patent 10,528,199 B2)
`IPR2023-00710 (Patent 11,093,000 B2)
`IPR2023-00711 (Patent 11,093,001 B1)
`
`FOR PETITIONER:
`Michael L. Kiklis
`Kimani P. Clark
`KIKLIS AND CLARK, PLLC
`michael@kiklisclark.com
`kimani@kiklisclark.com
`
`FOR PATENT OWNER:
`Matthew C. Holohan
`Robert R. Brunelli
`SHERIDAN ROSS P.C.
`mholohan@sheridanross.com
`rbrunelli@sheridanross.com
`
`11
`
`