Trials@uspto.gov
`571-272-7822
`
`
` Paper 20
`
`
` Entered: February 21, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`VL COLLECTIVE IP LLC,
`Patent Owner.
`____________
`
`IPR2023-00891
`Patent 8,605,794 B2
`____________
`
`
`
`Before KARL D. EASTHOM, JEFFREY S. SMITH, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Request
`to File a Motion for Additional Discovery
`37 C.F.R. § 42.51
`
`
`
`
`
`
`
`571-272-7822
`
`
` Paper 20
`
`
` Entered: February 21, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`VL COLLECTIVE IP LLC,
`Patent Owner.
`____________
`
`IPR2023-00891
`Patent 8,605,794 B2
`____________
`
`
`
`Before KARL D. EASTHOM, JEFFREY S. SMITH, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Request
`to File a Motion for Additional Discovery
`37 C.F.R. § 42.51
`
`
`
`
`
`
`
`
`IPR2023-00891
`Patent 8,605,794 B2
`VL Collective IP, LLC (“Patent Owner”) requested a teleconference
`with the panel seeking to file a motion to “(1) terminate the ’891 IPR
`because Netflix and Unified are estopped from maintaining the [’]891 IPR;
`(2) request additional discovery from Netflix in support of Patent Owner’s
`motion to terminate; and (3) request authorization for third party subpoenas
`to Unified Patents in support of Patent Owner’s motion to terminate.” See
`Ex. 3001, 3 (requesting teleconference). The panel held a teleconference
`with the parties on February 7, 2024.
`During the teleconference, Patent Owner discussed its intention to
`seek additional discovery and move to terminate this proceeding on the basis
`that 35 U.S.C. § 315(e)(1) estops Netflix, Inc. (“Petitioner”) from
`maintaining the proceeding based on an alleged real party in interest status
`of Petitioner and Unified Patents, LLC (“Unified Patents”). According to
`Patent Owner, estoppel under § 315(e)(1) applies because the Board issued a
`final written decision in Unified Patents, LLC v. VL Collective IP, LLC,
`IPR2022-01086, which addressed claims 1, 3, 5, 9, 12, 13, 15, 20, and 21 of
`Patent No. 8,605,794 B2 (“the ’794 patent”). See Ex. 3001, 3. To support
`its real party in interest allegation, Patent Owner stated it seeks to move for
`additional discovery under 37 CFR § 42.51(b)(2)(i) as to Petitioner’s
`membership status with Unified Patents, including, for example,
`membership agreements, documentation of payment, details as to the scope
`of Petitioner’s membership, and communications between Unified Patents
`and Petitioner. Patent Owner further stated it seeks to move for additional
`discovery from Unified Patents, including information as to how Unified
`Patents internally categorizes the ’794 patent.
`Petitioner opposed the proposed motion for additional discovery,
`arguing that Patent Owner has not sufficiently alleged evidence of a real
`
`2
`
`
`
`IPR2023-00891
`Patent 8,605,794 B2
`party in interest relationship between Petitioner and Unified Patents.
`Petitioner argued that in a similar discovery request in Netflix Inc. and Hulu,
`LLC v. DivX LLC, IPR2020-00052, the request did not satisfy Factor (1) of
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26
`(PTAB Mar. 5, 2013).
`We pointed out that Petitioner challenges dependent claims in this
`proceeding that were not addressed in IPR2022-01086, but that depend from
`claims that were addressed. We asked Patent Owner, if § 315(e)(1) were to
`apply to the claims addressed in IPR2022-01086, how we should proceed as
`to the dependent claims included in this proceeding that were not addressed
`in IPR2022-01086. Patent Owner asserted that in its view the entire
`proceeding should be terminated, but that it would need to consider the issue
`further. Petitioner asserted that even if Petitioner somehow was a real party
`in interest in IPR2022-01086, the dependent claims cannot be bifurcated
`from their independent claims, and because some claims in this proceeding
`were not addressed in IPR2022-01086, this proceeding could not be
`dismissed entirely.
`We asked the parties to meet and confer to discuss whether an
`agreement could be reached as to limited discovery. The parties contacted
`the Board on February 12, 2024, to confirm that they did not reach an
`agreement. Ex. 3001, 1.
`In view of the above, we authorize Patent Owner to file a motion for
`additional discovery under 37 CFR § 42.51(b)(2)(i) not to exceed 10 pages.
`We further authorize Petitioner to file an opposition not to exceed 10 pages,
`and also authorize Patent Owner to file a reply not to exceed 5 pages. As
`part of the briefing, we request that the parties propose how we should
`proceed with respect to the claims challenged in this proceeding and not
`
`3
`
`
`
`IPR2023-00891
`Patent 8,605,794 B2
`addressed in IPR2022-01086, in the event § 315(e)(1) were to apply. We
`expect such explanation to be necessary to satisfy Garmin Factor (1), that is,
`to “show beyond speculation that in fact something useful will be
`uncovered.” Garmin, IPR2012-00001, Paper 26, 6.
`Garmin states explicitly, “‘useful’ means favorable in substantive
`value to a contention of the party moving for discovery.” Id. at 7. As we
`noted during the conference call, termination of this entire proceeding based
`on § 315(e)(1) is unlikely. Therefore, in order to demonstrate what is useful
`in substantive value to Patent Owner’s contention, we request that Patent
`Owner propose how the Board proceeds on a claim-by-claim basis as part of
`its motion for additional discovery.
`
`ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner may file a motion for additional
`discovery not to exceed ten pages on or before February 28, 2024;
`Petitioner may file an opposition to the motion for additional
`discovery not to exceed ten pages on or before March 6, 2024; and,
`Patent Owner may file a reply to the opposition not to exceed five
`pages on or before March 12, 2024.
`
`
`
`4
`
`
`
`IPR2023-00891
`Patent 8,605,794 B2
`For PETITIONER:
`Aliza Carrano
`Indranil Mukerji
`John Moulder
`WILLKIE FARR & GALLAGHER LLP
`acarrano@willkie.com
`imukerji@willkie.com
`cmoulder@willkie.com
`
`For PATENT OWNER:
`
`Christine Lehman
`Michael Matulewicz-Crowley
`Naveed Hasan
`Jaime Cardenas-Navia
`REICHMAN JORGENSEN LEHMAN & FELDBERG LLP
`clehman@reichmanjorgensen.com
`mmatulewicz-crowley@reichmanjorgensen.com,
`nhasan@reichmanjorgensen.com
`jcardenas-navia@reichmanjorgensen.com
`
`5
`
`
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