Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 21
`Entered: November 12, 2013
`
`
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`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)1
`
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. Other
`than the motion and opposition expressly authorized herein, the parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 21
`Entered: November 12, 2013
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)1
`
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. Other
`than the motion and opposition expressly authorized herein, the parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`
`
`
`A conference call in the above proceedings was held on November 8,
`2013, among respective counsel for Petitioner and Patent Owner, and Judges
`Tierney, Arbes, and Braden.2 The call was requested by Patent Owner to
`address two issues originally raised during the initial conference call.
`See CBM2013-00020, Paper 22; CBM2013-00023, Paper 19.
`First, Patent Owner stated that it is continuing discussions with
`Petitioner regarding Patent Owner’s request for authorization for two of its
`litigation counsel to observe the instant proceedings, and is not requesting
`any action from the Board on the matter at this time.
`Second, Patent Owner sought authorization to file a motion for
`additional discovery of materials pertaining to the alleged commercial
`success of Petitioner’s iTunes Music Store (“ITMS”) and an alleged nexus
`between the claimed inventions and such commercial success. Patent Owner
`stated that it is requesting three categories of information from Petitioner:
`(1) technical documentation (specifications, engineering manuals, etc.)
`describing the operation of the ITMS, (2) technical documentation showing
`how customers purchase music using the ITMS, and (3) customer surveys
`pertaining to use of the ITMS. As to the first two categories, Patent Owner
`acknowledged that some information on the operation of the ITMS is
`already publicly available, but stated that it lacks information on how and
`when payment allegedly occurs, and how and when the transfer of music to
`the second party memory component allegedly occurs.
`
`
`2 A court reporter, retained by Patent Owner, was present on the call. Patent
`Owner shall file the transcript of the call as an exhibit in the instant
`proceedings.
`
`
`
`2
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`
`
`
`Petitioner opposed Patent Owner’s request, arguing that Patent Owner
`has not made a threshold showing that a motion is appropriate under the
`circumstances and has only requested broad categories of information, not
`specific documents. Petitioner further argued that Patent Owner lacks any
`evidence of, and cannot prove, a nexus between the claimed inventions and
`the alleged commercial success of the ITMS.
`After hearing from the parties, the Board determined that briefing on
`the matter is warranted. Therefore, Patent Owner is authorized to file a
`motion for additional discovery and Petitioner is permitted to file an
`opposition to the motion.
`Patent Owner in its motion should identify specifically what discovery
`is being requested and include a showing of good cause as to why each item
`is needed. See 37 C.F.R. § 42.224. Patent Owner should not expect the
`Board to sort through broad requests for “categories” of information to find
`particular items that may meet the standard. Requests for discovery will not
`be granted if they are unduly broad and encompass numerous documents
`that are irrelevant to the instituted grounds of unpatentability.
`The parties are directed to CBM2012-00001, Paper 24, dated
`November 15, 2012, and IPR2012-00001, Paper 26, dated March 5, 2013,
`for guidance on motions for additional discovery. In particular, the mere
`possibility of finding something useful, and mere allegation that something
`useful will be found, are insufficient. A party requesting discovery should
`already be in possession of some evidence (e.g., as to an alleged nexus) to
`show beyond mere speculation that something useful will be uncovered.
`Also, a request should not encompass publicly available information that the
`party has the ability to obtain without the need for discovery.
`
`
`
`3
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`
`
`
`Finally, Patent Owner requested an extension of time for filing its
`responses in the instant proceedings, currently due on December 9, 2013, to
`allow for motion briefing and discovery if Patent Owner’s motion is granted.
`Patent Owner stated that it would not be filing a motion to amend in Case
`CBM2013-00023, and, therefore, the schedule for the instant proceedings
`may be compressed (without altering DUE DATE 7 for oral argument)
`because no papers would be due on DUE DATE 3. As discussed during the
`call, the parties shall confer regarding a proposed revised schedule for the
`instant proceedings and provide their proposal(s) in their motion and
`opposition. The Board advised the parties that DUE DATE 7 will not be
`changed and no further extensions of time are contemplated.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner is authorized to file a motion for
`additional discovery under 37 C.F.R. § 42.51(b)(2) by November 15, 2013,
`limited to 10 pages; Petitioner is authorized to file an opposition by
`November 22, 2013, also limited to 10 pages; and no reply is authorized;
`FURTHER ORDERED that the motion and opposition shall be filed
`in both Case CBM2013-00020 and Case CBM2013-00023 using the heading
`on the first page of this Order;
`FURTHER ORDERED that Patent Owner shall include in its motion
`proposed revised dates for DUE DATES 1-6 in the instant proceedings and
`state whether Petitioner agrees to such revised dates;
`FURTHER ORDERED that if the parties cannot reach an agreement
`on a proposed revised schedule, Petitioner shall include in its opposition its
`own proposal for revised dates for DUE DATES 1-6; and
`
`
`
`4
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`
`
`
`FURTHER ORDERED that in light of the parties’ ongoing
`discussions, the parties need not file a joint statement stating whether an
`agreement was reached regarding Patent Owner’s request to observe the
`proceedings (as ordered in CBM2013-00020, Paper 22, and
`CBM2013-00023, Paper 19).
`
`
`
`5
`
`
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`PATENT OWNER:
`
`David R. Marsh
`Kristan L. Lansbery
`ARNOLD & PORTER LLP
`david.marsh@aporter.com
`kristan.lansbery@aporter.com
`
`
`
`
`
`6
`
`
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