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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`GOOGLE LLC
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`Petitioner
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`v.
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`DDC TECHNOLOGY, LLC,
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`Patent Owner
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`_________________________________________________
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`U.S. Patent No. 11,093,001
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`Case No.: IPR2023-00711
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`_________________________________________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
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`MOTION FOR ADDITIONAL DISCOVERY
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`_________________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________________________________
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`GOOGLE LLC
`
`Petitioner
`
`v.
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`DDC TECHNOLOGY, LLC,
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`Patent Owner
`
`_________________________________________________
`
`U.S. Patent No. 11,093,001
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`Case No.: IPR2023-00711
`
`_________________________________________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
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`MOTION FOR ADDITIONAL DISCOVERY
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`I.
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`Introduction
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`Patent Owner’s motion for additional discovery should be denied. Mot.,
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`paper 8. Although the Board authorized Patent Owner (DDC) to file its motion,
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`the Board cautioned that it “would not grant a motion for additional discovery
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`because patent owner has failed to satisfy Garmin factor one, based on the
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`information we have available today.” EX1013, 37:10-15. In view of this
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`guidance, DDC’s motion appears to turn away from its prior request for real-party-
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`in-interest (RPI) and privity discovery, which it had previously noticed to the
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`Board in seeking leave to file its motion. In fact, DDC does not even make any
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`specific discovery request as required by the Board’s rules. See 37 C.F.R. §
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`42.22(a)(1). Instead, DDC’s motion improperly raises a new, sweeping request for
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`cross-use of all of Petitioner’s documents from all prior district court litigations,
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`for which the Board did not grant authorization. The Board should reject DDC’s
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`motion.
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`II. Statement of Material Facts
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`1. On June 5, 2023, DDC emailed the Board requesting a conference call
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`seeking leave to file a motion for additional discovery “as to real party in
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`interest and privity issues.” EX1014, p. 1. That email includes several,
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`wide-ranging document requests about RPI and privity. Id. at pp. 1-2 (See
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`e.g., “RFP No. 4: Documents constituting or discussing any contracts,
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`1
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`
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`agreements, or business arrangements between Google and Mattel,
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`Merchsource, UC or OPS.”).
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`2. On June 13, 2023, the Board held a conference call with the parties. The
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`Board authorized DDC to file an additional discovery motion, but warned
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`that it “would not grant a motion for additional discovery because patent
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`owner has failed to satisfy Garmin factor one, based on the information we
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`have available today.” EX1013, 37:10-15. The Board set a deadline of June
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`27, 2023 for DDC’s motion if it were to file one, and a deadline of July 11,
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`2023 for Petitioner’s opposition. Id. at 38:8-11, 38:14-20. No reply brief
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`was authorized. Id. at 38:20-21.
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`3. On June 26, 2023, DDC for the first time raised a new discovery issue with
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`Petitioner, seeking blanket authorization to cross-use in the PTAB
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`proceedings any and all confidential Google documents from all prior
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`litigations. See EX1015.
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`4. On June 27, 2023, the parties held a meet and confer to discuss DDC’s new
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`request. In that call, Petitioner rejected the request for blanket authorization
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`for cross-use, because it was overly broad and some of the documents may
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`be subject to third-party confidentiality or a court order. But Petitioner said
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`that if DDC were to specifically identify which documents it would like to
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`use, Petitioner would consider that request. DDC has not yet responded.
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`2
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`
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`III. DDC Fails to Satisfy its Burden for Additional Discovery
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`DDC’s motion for additional discovery fails on both procedural and
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`substantive grounds.
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`a. DDC’s Motion Fails on Procedural Grounds
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`As to the RPI-related discovery, the motion does not provide “[a] statement
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`of the precise relief requested” as required by 37 C.F.R. § 42.22(a)(1). In
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`particular, nowhere does the motion discuss the document requests that DDC
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`emailed to the Board (EX1014), and also, the motion does not provide a “full
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`statement of the reasons for the relief requested” as required by 37 C.F.R. §
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`42.22(a)(2). DDC does not even attempt to rely on its email to the Board which
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`identified this discovery. But even if DDC did, incorporation by reference is
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`improper. 37 C.F.R. § 42.6.
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`Rather than addressing the discovery for which the Board granted leave to
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`file its motion, DDC improperly makes a new request of the Board, asking it to
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`compel “Google to permit use of Google documents produced in prior litigations
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`concerning infringement of the patents subject to these IPR proceedings.” Mot. at
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`3. DDC only sought leave to file a motion for additional discovery related to
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`RPI/privity. EX1014. DDC gave the Board no prior notice of this new request.
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`3
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`
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`Thus, this request exceeds the authorization the Board granted DDC in filing its
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`motion, and in any event, this issue is not yet ripe for the Board.
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`DDC first informed Petitioner of this new request the day before its brief
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`was due by stating that it wanted Google to agree that it be permitted “to use in
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`these PTAB proceedings any and all Google documents produced in any prior
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`litigation….” EX1015, p. 1 (emphasis added). Given the overly broad nature of
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`this request, which may implicate court orders or third-party confidentiality issues,
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`as well as many documents that Google produced having nothing to do with
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`RPI/privity issues, Petitioner stated in the meet and confer on the day that DDC’s
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`brief was due that it could not agree to blanket authorization. But Petitioner stated
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`that if DDC could specify which documents it would like to use, Petitioner would
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`consider this request. As of the filing of this opposition, DDC has made no such
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`request. As such, the parties are not at an impasse, and this issue is not ready for
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`the Board’s intervention. The Board should deny this request.
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`On procedural grounds alone, the Board should reject DDC’s motion for
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`failing to specify the requested RPI-related discovery and for departing
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`substantially from the discovery requests it had previously noticed to the Board in
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`seeking leave to file its motion.
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`
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`4
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`
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`b. DDC’s Motion Fails on Substantive Grounds
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`As to the merits, DDC’s motion also fails because it does not discuss the
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`companies at the center of its document requests other than MerchSource and
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`Orora Packaging Solutions (OPS). This is an abandonment of its requested
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`discovery related to the other companies that DDC identified in its email (Mattel
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`and Unofficial Cardboard). See EX1014.
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`As to MerchSource, DDC only mentions MerchSource in a footnote, where
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`DDC admits that it already has the evidence that it needs (failing Garmin factor 3)
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`and does not request more. Mot. at 2, n. 2 (“[t]he evidence confirms the opposite,
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`and the documents in DDC’s (and Google’s) possession will show and demonstrate
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`that Google’s discovery responses were deficient….”) (emphasis added). Indeed,
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`and contrary to DDC’s allegations, Google has already responded to DDC’s
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`Requests for Admission at the district court in which Google stated that it had no
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`communications about either MerchSource’s PTAB cases or the challenged patents
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`with (1) MerchSource, (2) its general counsel, or (3) various shareholders and
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`5
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`affiliates of MerchSource, thus foreclosing any finding of a privity or RPI
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`relationship. EX1018.1
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`As to OPS, it was sued on the same day as Petitioner. Thus, the one-year
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`time bar and estoppel are not at issue here, and based on SharkNinja, there is no
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`reason for the Board to delve into RPI and privity. SharkNinja Operating LLC v.
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`iRobot Corp., IPR2020-00734, Paper No. 11 (precedential). DDC attempts to
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`avoid SharkNinja by accusing Petitioner—without any evidence—of intentionally
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`omitting OPS as an RPI or privy in these proceedings “to avoid acknowledging the
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`scheduling order” in its litigation against DDC, “which would significantly impact
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`the Fintiv analysis.” 2 DDC does not explain this theory, provide any evidence, or
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`1 DDC takes Petitioner’s response that “there were no communications with
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`MerchSource whatsoever” out of context. EX1013, p. 18. Petitioner’s full
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`response at pages 15-22 is consistent with its discovery responses at the district
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`court. Nevertheless, Petitioner is aware of two communications with MerchSource
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`in which MerchSource mentions one of DDC’s pending patent applications. Those
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`emails were produced during the DDC v. MerchSource case, and it is Petitioner’s
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`understanding that DDC may still be in possession of those emails.
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`2 Fintiv is not an issue here. The co-pending litigation in which Petitioner is
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`a defendant has been stayed. See EX1016. And, although not mentioned by DDC,
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`6
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`cite to any legal authority, thus failing to satisfy 37 C.F.R. § 42.22(a)(2). Indeed,
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`Petitioner is unaware of any legal authority supporting DDC’s position. In fact, the
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`opposite is true. Citing SharkNinja, this Board has at least twice declined to
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`perform an RPI/privity analysis when there was no time-bar or estoppel issue even
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`though there was a Fintiv issue related to a third party. See Unified Patents, LLC v.
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`JustService.Net LLC, IPR2020-01258, Paper No. 183; Unified Patents, LLC v.
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`Monarch Networking Solutions LLC, IPR2020-01708, Paper No. 28, Appendix A.
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`Lastly, DDC did not adequately address the Board’s Garmin factor one
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`concern. DDC presents nothing new other than vaguely mentioning that it has
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`“obtained additional evidence strongly suggesting that Petitioner Google
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`intentionally omitted” naming OPS as an RPI or privy in these proceedings without
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`any indication of what this evidence is and what it means. This is simply not
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`enough to satisfy either 37 C.F.R. § 42.22(a)(2) or Garmin factor one.
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`OPS has also requested a stay in its litigation in view of these IPR proceedings.
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`See EX1017, pp. 10-11.
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`3 Patent Owner’s backup counsel in these proceedings was also counsel in
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`IPR2020-01258.
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`7
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`IV. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests the Board deny
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`DDC’s motion.
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`Dated: July 11, 2023
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`Michael L. Kiklis______
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`Respectfully Submitted,
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`Michael L. Kiklis
`Reg. No. 38,939
`Attorney for Petitioner
`Google LLC
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`8
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) of
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
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`ADDITIONAL DISCOVERY and Exhibits 1014, 1015, 1016, 1017, and 1018 by
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`filing these documents through the USPTO Patent Trial and Appeal Case Tracking
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`System and by emailing a copy to the following email addresses:
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`mholohan@sheridanross.com
`rbrunelli@sheridanross.com
`DDC-Service_Google-IPRs@sheridanross.com
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`Dated: July 11, 2023
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`Michael L. Kiklis______
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`Respectfully Submitted,
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`Michael L. Kiklis
`Reg. No. 38,939
`Attorney for Petitioner
`Google LLC
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