From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Bodner, Marcella M.
`Trials
`Sorden, Gary; Scott Breedlove; Trevor O"Neill; Nirav N. Desai; Jason Eisenberg; PTAB Account
`PGR2020-00013 / US 10,294,717 - Parties" Joint Communication Regarding Discovery
`Friday, October 9, 2020 5:59:19 PM
`image001.png
`
`PGR2020-00013
`US 10,294,717
`Lutron v. GeigTech
`
`Re: Discovery
`
`Dear Board,
`
`The Board’s October 5, 2020 Order requested the parties jointly submit an update by October
`9, 2020 addressing three issues. The Parties are available at the Board’s convenience to have
`another call to address the issues discussed below if the Board thinks it would be helpful.
`
`1.
`
`Whether the parties have resolved issues related to the District Court
`protective order and our standard protective order.
`
`District Court protective order: The parties have not resolved this issue.
`
`Patent Owner: On Monday, Petitioner’s litigation counsel announced that it was refusing to
`allow any of the documents to be used in the above-numbered PGR. Thus, there was nothing
`left to discuss with Petitioner so Patent Owner submitted a letter to the District Court on
`Wednesday requesting an order to use the documents, pursuant to Section IV.D. of the
`Protective Order in that case. Petitioner’s PGR counsel did not respond until late Wednesday
`and echoed the statements of Petitioner’s litigation counsel. The parties called the Court
`yesterday to apprise it of the issue and its time sensitivity. The Court asked if Petitioner would
`be filing a response in opposition to Patent Owner’s letter motion. Petitioner expects to file the
`opposition by Wednesday next week. The Court will then review the letters together. The
`Parties will promptly update the Board when we have further guidance from the Court.
`
`Petitioner: At the outset, Petitioner believes it is inappropriate for Patent Owner to use this
`joint email to make arguments and to add its letter to the District Court to this record,
`particularly since Petitioner has not yet responded to that letter. But unfortunately, and with
`apologies to the Board, Petitioner is forced to respond. On Saturday after the Board call last
`week, Petitioner made another request to discuss Patent Owner’s list of documents to narrow
`and resolve issues consistent with Petitioner’s understanding of the Board’s direction to the
`parties. On Sunday, Patent Owner declined to have any such discussions, and instead renewed
`its demand that Petitioner simply agree. As a result, on Monday Petitioner indicated that it
`could not agree to a modification of the District Court protective order. Without agreement,
`use or discussion of protected documents at the PTAB violates the protective order unless and
`until the District Court orders modification. Petitioner’s PTAB counsel understands that
`Petitioner’s litigation counsel committed to respond to that letter next week and expects to do
`so by Wednesday.
`
`(cid:51)(cid:42)(cid:53)(cid:21)(cid:19)(cid:21)(cid:19)(cid:16)(cid:19)(cid:19)(cid:19)(cid:20)(cid:22)
`(cid:40)(cid:91)(cid:17)(cid:3)(cid:22)(cid:19)(cid:19)(cid:21)(cid:3)(cid:83)(cid:17)(cid:3)(cid:20)(cid:3)(cid:82)(cid:73)(cid:3)(cid:23)
`
`

`

`PTAB protective order: The parties have not yet resolved this issue.
`
`Petitioner: At Patent Owner’s request, Petitioner is revising and circulating to Patent Owner a
`proposed modified version of the PTAB default protective order at least because many of the
`documents on Patent Owner’s list were designated Attorney’s Eyes Only in the District Court
`and the current default protective order does not cover the increased restrictions for these
`documents.
`
`Patent Owner: Patent Owner remains prepared, as it always has, to consider and sign off on
`any reasonable restrictions Petitioner thinks necessary once Patent Owner receives Petitioner’s
`proposal.
`
`2.
`
`Whether Patent Owner seeks to renew its request for authorization to
`file a motion for additional discovery.
`
`Patent Owner: In short, yes. Patent Owner has no other choice. Petitioner’s litigation counsel
`refuses to allow any of the documents to be used in the above-numbered PGR, and Petitioner’s
`PTAB counsel refuses to produce any of the documents as part of the PGR discovery process
`here. Patent Owner believes these documents are highly-relevant evidence for the Board to
`consider in determining whether the ’717 Patent is obvious. The documents are a subset of
`documents produced in the District Court litigation. In the District Court litigation, Patent
`Owner accuses of Lutron of trade dress and patent infringement. While Patent Owner
`understands Petitioner disagrees with Patent Owner’s assessment of the evidence and its
`application to the law, Petitioner has not offered any reason why these documents should not
`be discoverable here pursuant to the Garmin factors. Petitioner’s arguments all go instead to
`the weight the Board should give the evidence. As to Garmin factor one, Patent Owner meets
`that standard with ease, even though it really has little application here because Patent Owner
`is requesting a few specific documents, not making broad document requests. Garmin factor
`one is concerned with speculation and fishing expeditions, which is not an issue here. All the
`other Garmin factors are in Patent Owner’s favor, and Petitioner has not argued otherwise.
`
`Patent Owner has thus prepared and seeks the Board’s authorization to file a Motion to request
`this discovery and to address the Garmin factors in more detail. Patent Owner would only
`need five pages for its Motion.
`
`Petitioner: Petitioner continues to believe that any motion is premature since the parties have
`not had so much as a teleconference to discuss Patent Owner’s position with respect to the
`requested documents in an attempt to narrow the issues. Petitioner has no new information
`from Patent Owner regarding its position since last week’s Board call. Petitioner maintains
`that Garmin factor one does have application here and is not met for any of the 30 documents,
`especially since the instituted issues are very narrow: duplication of parts. Pet., 32-34.
`Moreover, other Garmin factors do not weigh in Patent Owner’s favor. For example, Garmin
`factor three still weighs heavily in Petitioner’s favor because there are other means to generate
`this information—agreed or ordered modification of the District Court protective order.
`Nevertheless, if the Board grants Patent Owner authorization, Petitioner is prepared to oppose
`such a motion within seven days of the motion and also within five pages.
`
`3.
`
`Whether the parties have agreed upon any date changes to the
`scheduling order.
`
`(cid:51)(cid:42)(cid:53)(cid:21)(cid:19)(cid:21)(cid:19)(cid:16)(cid:19)(cid:19)(cid:19)(cid:20)(cid:22)
`(cid:40)(cid:91)(cid:17)(cid:3)(cid:22)(cid:19)(cid:19)(cid:21)(cid:3)(cid:83)(cid:17)(cid:3)(cid:21)(cid:3)(cid:82)(cid:73)(cid:3)(cid:23)
`
`

`

`Patent Owner: While Patent Owner would prefer to use the documents and keep the current
`schedule unchanged, Petitioner’s recently disclosed positions make that impossible. Patent
`Owner never thought using these documents would be such a complicated or contentious
`issue. Petitioner had agreed back in March to allow Patent Owner to use these documents and
`then communicated a few weeks ago its desire to reach an agreement. Indeed, Petitioner did
`not make clear its position until Monday of this week when it announced it was refusing to
`allow the use of the documents. Given that Petitioner is now forcing Patent Owner to seek the
`District Court’s involvement, Patent Owner believes that the schedule needs to be modified so
`that this issue can be ruled upon by the Court and any necessary follow-on briefing before the
`Board or the Court can be completed. The Board indicated that extending the schedule is an
`available option and could be exercised by the Parties here. As it stands, Patent Owner
`believes a two-week extension should be sufficient but that may change depending on how
`fast the District Court is able to address Patent Owner’s letter.
`
`Petitioner: Patent Owner has had these 30 documents since between January and early June.
`The Board held a call on June 25 inviting the parties to raise any issues or requests in this
`proceeding, but Patent Owner failed to raise this issue. The Board instituted trial on August 4,
`yet Patent Owner waited until September 16 to raise this issue. When Petitioner proposed an
`agreement in March to permit the use of three of these documents—not thirty—Petitioner’s
`email went unanswered for 5.5 months. Any time sensitivity, therefore, is of Patent Owner’s
`own making, could have been avoided, and does not warrant any extensions of due dates,
`particularly given the uncooperative approach Patent Owner has taken since the last Board
`call. Nevertheless, Petitioner would be willing to agree to Patent Owner’s requested two-week
`extension to Due Date 1 so long as an equal and reciprocal extension is provided for Due Date
`2.
`
`The Parties request the Board’s further orders and guidance on the above issues.
`
`Kind Regards,
`
`Gary R. Sorden
`Member | Cole Schotz P.C.
`Direct 469.557.9396 | gsorden@coleschotz.com
`901 Main Street | Dallas, TX | 75202
`firm 469-557-9390 | fax 469.466.6231 |
`New Jersey | New York | Delaware | Maryland | Texas | Florida
`(Adrienne Hickey, Legal Practice Assistant | 469-557-9390, ext. 9393 | ahickey@coleschotz.com)
`
`Marcella M. Bodner
`Special Counsel
`25 Main Street | Hackensack, NJ | 07601
`Direct 201.525.6242 | Firm 201.489.3000 | Fax 201.678.6242 | mbodner@coleschotz.com
`
`(cid:51)(cid:42)(cid:53)(cid:21)(cid:19)(cid:21)(cid:19)(cid:16)(cid:19)(cid:19)(cid:19)(cid:20)(cid:22)
`(cid:40)(cid:91)(cid:17)(cid:3)(cid:22)(cid:19)(cid:19)(cid:21)(cid:3)(cid:83)(cid:17)(cid:3)(cid:22)(cid:3)(cid:82)(cid:73)(cid:3)(cid:23)
`
`

`

`New Jersey | New York | Delaware | Maryland | Texas | Florida
`vCard | bio | website
`(Legal Practice Assistant: Luanne Crowley | 201.489.3000 x 5033 | lcrowley@coleschotz.com)
`
`* * * * * *
`This e-mail message from Cole Schotz P.C. is private and may contain privileged information.
`If you are not the intended recipient, please do not read, copy or use it or disclose it to others.
`If you have received this message in error, please notify the sender immediately by replying to
`this message and then delete it from your system.
`
`(cid:51)(cid:42)(cid:53)(cid:21)(cid:19)(cid:21)(cid:19)(cid:16)(cid:19)(cid:19)(cid:19)(cid:20)(cid:22)
`(cid:40)(cid:91)(cid:17)(cid:3)(cid:22)(cid:19)(cid:19)(cid:21)(cid:3)(cid:83)(cid:17)(cid:3)(cid:23)(cid:3)(cid:82)(cid:73)(cid:3)(cid:23)
`
`