Trials@uspto.gov
`571-272-7822
`
`Paper 25
`Entered: February 22, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`META PLATFORMS, INC.; INSTAGRAM, INC.; WHATSAPP LLC;
`META PLATFORMS TECHNOLOGIES, LLC; AND GIPHY, INC.,
`Petitioner,
`v.
`VL COLLECTIVE IP LLC,
`Patent Owner.
`
`IPR2023-00924
`Patent 7,436,980 B2
`
`
`Before KARL D. EASTHOM, JEFFREY S. SMITH, and
`DAVID C. MCKONE, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Granting Petitioner’s Motion under 37 C.F.R. § 42.52(a) to Apply for
`Subpoena under 35 U.S.C. § 24
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 25
`Entered: February 22, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`META PLATFORMS, INC.; INSTAGRAM, INC.; WHATSAPP LLC;
`META PLATFORMS TECHNOLOGIES, LLC; AND GIPHY, INC.,
`Petitioner,
`v.
`VL COLLECTIVE IP LLC,
`Patent Owner.
`
`IPR2023-00924
`Patent 7,436,980 B2
`
`
`Before KARL D. EASTHOM, JEFFREY S. SMITH, and
`DAVID C. MCKONE, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Granting Petitioner’s Motion under 37 C.F.R. § 42.52(a) to Apply for
`Subpoena under 35 U.S.C. § 24
`
`
`
`
`
`
`
`
`
`
`
`IPR2023-00924
`Patent 7,436,980 B2
`Petitioner filed a Petition (Paper 3) requesting inter partes review of
`claims 1–16 of U.S. Patent No. 7,436,980 B2 (Ex. 1001, “the ’980 patent”).
`In our Decision to Institute (Paper 11, “Dec.”), we granted institution and
`stated that Petitioner has not demonstrated a reasonable likelihood of
`showing that a paper titled “Tracking Loose-limbed People” (Ex. 1009,
`“TLP”) was prior art to the ’980 Patent. Dec. 56.
`Petitioner, pursuant to our authorization, filed a Motion for
`Authorization to Compel Discovery and Production of Documents pursuant
`to 37 C.F.R. § 42.52(a), including issuing subpoenas pursuant to 35 U.S.C.
`§ 24 and filing any testimony or documents produced therefrom, in order to
`address the public availability of TLP before May 27, 2004, which is the
`effective filing date of the ’980 patent. Paper 17 (“Mot.”). TLP was
`presented at an IEEE Computer Society Conference on Computer Vision
`and Pattern Recognition (“the CVPR conference”), which was held from
`June 27 to July 2, 2004. Ex. 1010. TLP was submitted to the CVPR
`conference on November 19, 2003, and the TLP manuscript was submitted
`to the CVPR conference on April 9, 2004. Ex. 1010.
`In particular, Petitioner requests authorization to compel discovery
`and production of documents from the authors of TLP, who are Leonid
`Sigal, Sidharth Bhatia, Stefan Roth, Michael Black, and Michael Isard (“the
`authors”); the inventors of the ’980 patent, who are Leonid Sigal, Ying Zhu,
`and Dorin Comaniciu (“the inventors”); and the prior assignees of the ’980
`patent, including Siemens Corp., Siemens Corp. Research Inc., and Siemens
`Medical Solutions USA, Inc (“the prior assignees”) (all together “the TLP
`Discovery Parties”) to show whether TLP was publicly accessible before
`May 27, 2004. Mot. 3. Patent Owner filed an Opposition. Paper 20
`
`2
`
`
`
`IPR2023-00924
`Patent 7,436,980 B2
`(“Opp.”). Both parties support their respective arguments by analyzing the
`factors listed in Garmin International, Inc. v. Cuozzo Speed Technologies
`LLC, IPR2012-00001, 6–7 (PTAB Mar. 5, 2013) (Paper 26) (“the Garmin
`factors”). See generally, Mot.; Opp.
`We held a conference call on February 20, 2024, with the parties to
`discuss Petitioner’s motion. Judges Easthom, Smith, and McKone, as well
`as Todd Baker, Jonathan Brit, Ellisen Turner, and Jennifer Bush for
`Petitioner, and Christine Lehman, Jaime Cardenas-Navia, and Philip Eklem
`for Patent Owner, participated on the call. We held the call in order to
`determine whether the parties could obtain information regarding the
`publication date of TLP without going through the subpoena process, given
`the short time frame of this inter partes review and the fact that two of the
`witnesses live abroad.
`
`During the call, Petitioner stated that it seeks information, such as
`emails and invention disclosure documents which would identify details of
`the public distribution of TLP. Petitioner stated that a subpoena would not
`be necessary with respect to the inventors and prior assignees if Patent
`Owner requests information from the inventors and prior assignees related to
`the publication date of TLP within a time period beginning one month
`before the conference and ending one month after the conference. Petitioner
`also requested permission to obtain a subpoena to gather this information in
`the event that Patent Owner’s request is unsuccessful.
`
`During the call, Patent Owner stated that it wanted Petitioner’s request
`to be limited to emails related to the peer review process discussed in the
`Declaration of Dr. Bajaj (Ex. 1004). Patent Owner stated that Petitioner’s
`request is overbroad and seeks new facts to support a new theory not
`
`3
`
`
`
`IPR2023-00924
`Patent 7,436,980 B2
`advanced in the Declaration. Petitioner stated that the request should not be
`limited to the peer review process, but should cover the conference
`generally, and that its request is not overbroad because the request concerns
`information about a single paper at a single event within a two-month
`window of the event. Patent Owner stated that it would request the
`information from the inventors and prior assignees within a couple of weeks,
`but that it could not guarantee that the inventors and prior assignees would
`cooperate with the request.
`During the call, we raised the issue of whether, in the event that the
`inventors and prior assignees refuse to cooperate with Patent Owner’s
`request, we should draw an inference that the information that would have
`been obtained would have been favorable to Petitioner. We note that the
`prior assignees have agreed with Patent Owner that, “whenever reasonably
`requested by Assignee, Assignor will execute all papers, take all rightful
`oaths, and do all acts which may be reasonably necessary for securing and
`maintaining the Patents in any country and for vesting title thereto in
`Assignee, its successors, assigns and legal representatives or nominees.”
`Ex. 1047 ¶ 4. Similarly, the inventors have agreed to “generally do
`everything possible which said Assignee, its successors, assigns or legal
`representatives shall consider desirable for aiding in securing and
`maintaining proper patent protection for said improvements and for vesting
`title to said improvements and all applications for patents and all patents on
`said improvements, in said Assignee, its successors, assigns and legal
`representative.” Ex. 1044, 3. Thus, it appears that Patent Owner has the
`power to compel the prior assignees and the inventors to cooperate in
`discovery in this proceeding.
`
`4
`
`
`
`IPR2023-00924
`Patent 7,436,980 B2
`We also emphasized the necessity of issuing a final decision within a
`year of the institution date. Petitioner stated that it expected to complete its
`discovery before filing the Petitioner’s Reply.
`We find Petitioner’s request of Patent Owner to be reasonable, and we
`appreciate the willingness of the parties expressed during the call to seek to
`obtain information about the publication date of TLP without going through
`the subpoena process. We also understand that the subpoena process may
`still be necessary to obtain information about the publication date of TLP.
`In any event, we evaluate the Motion to Compel in light of the
`Garmin factors. A party moving for subpoena “must show that such
`additional discovery is in the interests of justice.” 37 C.F.R. § 42.51(b)(2).
`The Board has identified factors important in determining whether an
`additional discovery request meets the standard of being “in the interest of
`justice.” Garmin International, Inc., IPR2012-00001 at 6–7. Having
`reviewed arguments of the parties, we find that the Garmin factors weigh in
`favor of allowing the discovery for the reasons given below.
`Garmin Factor 1 – Useful Information
`Petitioner contends that TLP was part of the CVPR conference held
`from June 27 to July 2, 2004. Mot. 4. Petitioner contends that the TLP
`Discovery Parties may have information about the public availability of
`TLP. Id. In particular, Petitioner contends that the TLP Discovery Parties
`may have emails confirming the date of public dissemination of TLP to the
`conference goers in advance of the conference. Id. at 4, 6. Petitioner also
`contends that Michael Black, one of the authors, uploaded TLP to a website
`and indicated that TLP was publicly available in January 2004. Id. at 5.
`
`5
`
`
`
`IPR2023-00924
`Patent 7,436,980 B2
`Patent Owner contends that Petitioner has not shown that the TLP
`Discovery Parties will have information about the TLP publication date.
`Opp. 4-5. In particular, Patent Owner contends that Petitioner has not shown
`that the authors have emails showing the date of public accessibility of TLP
`before May 27, 2004. Id. at 7. Patent Owner also contends that Petitioner
`has not shown that Michael Black indicated that TLP was publicly available
`in January 2004, nor that the January 2004 date relates to public accessibility
`through the conference. Id. at 6.
`Considering the first Garmin factor, Petitioner has shown, beyond
`speculation, that TLP was first registered with the CVPR conference on
`November 14, 2003, and that documents such as emails and brochures in the
`possession of the TLP Discovery Parties dated between November 14, 2003,
`and May 27, 2004, likely would provide useful information regarding the
`public accessibility of TLP. In particular, this information would be useful
`in determining whether TLP was disseminated to the CVPR conference
`goers before May 27, 2004. Similarly, Petitioner has shown, beyond
`speculation, that author Michael Black can provide useful information about
`whether he made comments on a website regarding the date of public
`accessibility of TLP.
`Garmin Factor 2 – Litigation Positions
`Both parties agree that the request does not seek litigation positions of
`Patent Owner. Mot. 6; Opp. 7.
`Garmin Factor 3 – Equivalent Information
`Petitioner contends that the TLP Discovery Parties have not
`responded to Petitioner’s repeated requests for information showing the
`public availability of TLP before May 27, 2004. Mot. 6–7. Patent Owner
`
`6
`
`
`
`IPR2023-00924
`Patent 7,436,980 B2
`contends that Petitioner could obtain other information to show the date of
`public availability of TLP without a discovery request. Opp. 8.
`Considering Garmin Factor 3, Patent Owner has not indicated what
`other information Petitioner could obtain to show the date of public
`accessibility of TLP. We agree with Petitioner, that other information does
`not appear to be available.
`Garmin Factor 4 -- Instructions
`Petitioner contends that the discovery request is limited and would
`simply request documents such as conference brochures or emails, and
`testimony sufficient to show the public availability of TLP. Mot. 7. Patent
`Owner contends that Petitioner has not disclosed its proposed instructions.
`Opp. 8.
`Considering Garmin Factor 4, we agree with Petitioner, that
`instructions for documents such as brochures and emails related to TLP, and
`testimony sufficient to show the date of public availability of TLP, are easily
`understandable.
`
`Garmin Factor 5 -- Burden
`Petitioner contends that its discovery request is not overly
`burdensome to answer because it may be satisfied by the production of a
`small number of documents or a declaration in lieu of testimony. Mot. 7–8.
`Patent Owner contends that the request broadly seeks information related to
`any conceivable form of public accessibility. Opp. 9. Patent Owner
`contends that Petitioner may not seek this information for the first time in
`reply. Id. at 10. Patent Owner contends that seeking discovery from ten or
`more third parties underscores the burdensome nature of the request. Id.
`
`7
`
`
`
`IPR2023-00924
`Patent 7,436,980 B2
`Considering Garmin Factor 5, Petitioner’s request for third party
`discovery is not overly burdensome to Patent Owner. Further, producing
`documents such as emails and brochures relating to the date of public
`accessibility of TLP, and testimony sufficient to show the date of public
`accessibility, is not overly burdensome to the TLP Discovery Parties.
` Conclusion
`We determine that Petitioner’s request for third party discovery would
`be useful and not unduly burdensome, and grant Petitioner’s request,
`specifically concerning “the public availability of TLP before May 27, 2004,
`the earliest claimed priority date of the ’980 Patent.” Paper 17, 1.
`
`
`
`8
`
`
`
`IPR2023-00924
`Patent 7,436,980 B2
`It is
`ORDERED that Patent Owner shall request from the inventors and
`prior assignees of the ’980 patent, pursuant to their agreements under
`Exhibits 1044 and 1047, information related to the publication date of TLP
`(Ex. 1009), including documents dated between April 9, 2004 and August 2,
`2004, and invention disclosure statements for the ’980 patent;
`FURTHER ORDERED that Petitioner’s Motion Under 37 C.F.R.
`§ 42.52(a) to Apply for Subpoena Under 35 U.S.C. § 24 to Compel
`Production of Documents and Testimony from the TLP Discovery Parties is
`granted;
`FURTHER ORDERED that the scope of the Subpoena shall be
`limited to information related to the publication date of TLP; and,
`
`FURTHER ORDERED that Patent Owner is permitted to attend any
`deposition testimony that occurs under the Subpoena and to cross-examine
`each witness, but only regarding the subject matter of the direct testimony of
`the witness.
`
`
`9
`
`
`
`IPR2023-00924
`Patent 7,436,980 B2
`For PETITIONER:
`W. Todd Baker
`Ellisen Shelton Turner
`Jonathan D. Brit
`KIRKLAND & ELLIS LLP
`todd.baker@kirkland.com
`ellisen.turner@kirkland.com
`jonathan.brit@kirkland.com
`
`Jennifer R. Bush
`FENWICK & WEST LLP
`jbush@fenwick.com
`
`
`For PATENT OWNER:
`
`Christine E. Lehman
`Michael Matulewicz-Crowley
`Philip J. Eklem
`Jaime F. Cardenas-Navia
`REICHMAN JORGENSEN LEHMAN & FELDBERG LLP
`clehman@reichmanjorgensen.com
`mmatulewicz-crowley@reichmanjorgensen.com
`peklem@reichmanjorgensen.com
`jcardenas-navia@reichmanjorgensen.com
`
`10
`
`
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