`Date: April 22, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, INC.
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2013-00586
`Patent 6,738,799 B2
`____________
`
`Before JAMESON LEE, JUSTIN BUSCH, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2013-00586
`Patent 6,738,799
`
`
`
`
`
`Introduction
`An initial conference call was held on April 21, 2014, between respective
`
`counsel for the parties and Judges Lee, Elluru, and Busch. Neither party filed a
`proposed motions list, and counsel for each party indicated that Due Dates 1-7 as
`set in the Scheduling Order dated March 21, 2014 (Paper 10) do not pose any
`problem. Thereafter, counsel for Patent Owner requested permission to file a
`motion for additional discovery. Although no proposed motions list was filed by
`the Patent Owner, we permitted counsel for Patent Owner to discuss the request.
`Discussion
`The Patent Owner’s preliminary response asserts that Petitioner failed to
`
`identify Google Inc. as a real party-in-interest, and that because Google Inc. is a
`real party-in-interest which had been served, on May 24, 2012, with a complaint
`alleging infringement of U.S. Patent No. 6,738,799, Petitioner’s petition is time-
`barred under 35 U.S.C. § 315(b). Paper 5, 20. According to counsel for Patent
`Owner, Patent Owner requests merely five or fewer focused interrogatories on the
`precise issue of the real-party-interest, similar to those which had previously been
`authorized in IPR2014-00171. As represented by counsel for Patent Owner, the
`circumstances providing a reasonable basis for its belief that Google Inc. is a real
`party-in-interest already are presented in its preliminary response (Paper 5).
`
`Counsel for Petitioner opposed authorization of the request on the basis that
`Patent Owner did not ask for additional discovery on this point prior to the
`institution of trial, and therefore, Patent Owner should not be allowed to ask for
`additional discovery now, after institution of trial. The argument is without merit.
`It is not necessary that a Patent Owner even file a preliminary response. Not
`having asked for additional discovery prior to institution of trial does not waive
`Patent Owner’s opportunity to ask for additional discovery after institution of trial.
`
`2
`
`
`
`
`
`
`IPR2013-00586
`Patent 6,738,799
`
`
`Furthermore, the Section 315(b) bar is a jurisdictional issue that can be raised at
`any time.
`
`Counsel for Petitioner argued that the information upon which Patent Owner
`relies to assert that Google Inc. is a real party-in-interest constitutes hearsay.
`However, that information is not relied on to prove the truth of the matter asserted,
`just for what it says. Moreover, the information is not offered as proof that Google
`Inc. is a real party-in-interest, but as the foundation for taking Patent Owner’s
`belief out of the realm of mere speculation. Counsel for Petitioner further
`acknowledged that the type of interrogatories proposed by Patent Owner, if five or
`fewer, do not pose excessive burden for Petitioner to answer.
`
`We indicated that prior to deciding whether to authorize the filing by Patent
`Owner of a motion for additional discovery, we would like to see the
`interrogatories. Counsel for Patent Owner agreed to provide them. The Patent
`Owner should file the proposed interrogatories in a paper captioned “Proposed
`Interrogatories for Additional Discovery.”
`Conclusion
`
`It is
`
`ORDERED that within one week of the date of this communication, Patent
`
`Owner shall file a set of “proposed” interrogatories, five or fewer, and label the
`submission as “First Proposed Interrogatories”;
`
`FURTHER ORDERED that we will issue a decision on Patent Owner’s
`request for authorization to file a motion for additional discovery, shortly after
`filing of Patent Owner’s First Proposed Interrogatories;
`
`FURTHER ORDERED that within two business days of the filing of Patent
`Owner’s First Proposed Interrogatories, counsel for Petitioner may initiate a
`
`3
`
`
`
`
`
`
`IPR2013-00586
`Patent 6,738,799
`
`
`conference call with the Board to discuss any issue it sees with regard to the
`proposed interrogatories; and
`
`FURTHER ORDERED that Due Dates 1-7 as set in the Scheduling Order
`dated March 21, 2014 (Paper 10) remain unchanged.
`
`
`
`
`
`For Petitioner:
`Michael Kiklis
`Scott McKeown
`CPdocketkiklis@oblon.com
`codocketmckeown@oblon.com
`
`For Patent Owner:
`Tarek Fahmi
`Amy Embert
`tarek.fahmi@fseip.com
`amy.embert@fseip.com
`
`
`4
`
`
`
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