UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
`Petitioner,
`
`v.
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`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner
`
`Case IPR 2014-0086
`Patent No. 7,010,536
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`PATENT OWNER’S LIST OF PROPOSED MOTIONS
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner,
`
`v.
`
`EVOLUTIONARY INTELLIGENCE, LLC,
`Patent Owner
`
`Case IPR 2014-0086
`Patent No. 7,010,536
`
`
`
`
`PATENT OWNER’S LIST OF PROPOSED MOTIONS
`
`
`
`
`
`
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`
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`PATENT OWNER’S LIST OF PROPOSED MOTIONS
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`Pursuant to the Scheduling Order (Paper No. 9) and the Trial Practice Guide
`
`(77 C.F.R. 48756 et seq.), Patent Owner proposes to file the following motions:
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`A. Motion for Additional Discovery regarding Real Parties in Interest
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`Pursuant to 37 C.F.R. § 42.51(b)(2), a motion for additional discovery on the
`
`issue of real party in interest. As noted in the Mandatory Notices, the following
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`lawsuits involve the patent under review:
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`• 3:13-cv-04201-JMD (N.D. Cal.) Evolutionary Intelligence, LLC v. Apple
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`Inc.
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`• 3:13-cv-04202-SI (N.D. Cal.) Evolutionary Intelligence, LLC v. Facebook,
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`Inc.
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`• 3:13-cv-04203-MMC (N.D. Cal.) Evolutionary Intelligence, LLC v.
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`Foursquare Labs, Inc.
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`• 3:13-cv-04204-SI (N.D. Cal.) Evolutionary Intelligence, LLC v. Groupon,
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`Inc.
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`• 3:13-cv-04205-WHO (N.D. Cal.) Evolutionary Intelligence, LLC v.
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`LivingSocial, Inc.
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`• 3:13-cv-04206-EJD (N.D. Cal.) Evolutionary Intelligence, LLC v.
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`Millennial Media, Inc.
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`• 5:13-cv-04513-RMW (N.D. Cal.) Evolutionary Intelligence, LLC v. Sprint
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`Nextel Corporation et al.
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`
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`• 3:13-cv-04207-JSW (N.D. Cal.) Evolutionary Intelligence, LLC v. Twitter,
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`Inc.
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`• 4:13-cv-03587-DMR (N.D. Cal.) Evolutionary Intelligence, LLC v. Yelp,
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`Inc.
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`Petitioner has coordinated its defense efforts with the other defendants in the
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`above actions. Although most cases were stayed prior to invalidity contentions
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`being served, the Sprint defendants served invalidity contentions that overlap
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`considerably with positions asserted by Apple in the five petitions for inter partes
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`review (2014-00079; -00080; -00082; -00083; and -00085) filed concurrently with
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`this case, as well as the concurrent petitions filed by Facebook (No. 2014-00093)
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`and Yelp and Twitter (2014-00092).
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`Accordingly, Patent Owner requests authorization to file a motion for
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`additional discovery concerning the relationship between Petitioner and the other
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`defendants with respect to their participation in and control over the preparation of
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`the Petition upon which the current trial was instituted.
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`Patent Owner cannot currently request discovery in the respective district
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`court proceedings of any agreements between Petitioner and the other defendants
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`due to stays of all concurrent litigation. Patent Owner is seeking to lift the stays in
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`some of those proceedings, but such agreements are not presently available to
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`counsel representing Patent Owner in this inter partes review trial.
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`3
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`B. Motion for Additional Discovery re: Prior Testimony
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`Pursuant to 37 C.F.R. § 42.51(b)(2), Patent Owner may file a motion for
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`additional discovery regarding Mr. Houh’s testimony in other matters.
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`C. Motion to Amend
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`Pursuant to 37 C.F.R. § 42.121, a contingent motion to amend the patent
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`under review by substituting two claims for each and every claim found by the
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`Board to be unpatentable on a ground specified in the decision instituting inter
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`partes review (Paper No. 8). Patent Owner understands that, under 37 C.F.R. §
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`42.121(a)(3), the Board normally only allows a single substitute claim for each
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`claim found to be unpatentable. In this case, however, the claims found
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`unpatentable are multiply dependent on claims 1 and 2. As such, Patent Owner
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`will seek to substitute two claims for each multiply dependent claim (i.e., one for
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`each independent claim from which the multiply dependent claim depends). Patent
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`Owner expects that the proposed substitute claims for claim 1 (which is not under
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`review in this proceeding) will amend to limit each dependent claim to depending
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`from claim 1, but contain no other amendments. The second set of proposed
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`claims will depend from claim 2 and will contain other proposed amendments, not
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`yet determined.
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`D. Motion for Observation on Cross-Examination
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`Patent Owner may also file a motion for observation on cross-examination at
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`the appropriate time.
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`4
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`E. Motion to File Corrected Exhibit 2002
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`Patent Owner wishes to correct Exhibit 2002, which should contain excerpts
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`from the Oxford Dictionary of Computing Terms. Patent Owner inadvertently
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`submitted a PDF with pages from other documents as part of this exhibit, and
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`wishes to file a corrected PDF.
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`
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`Respectfully Submitted,
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`
`
` /s/Anthony J. Patek/
`Anthony J. Patek. No. 66,463
`Attorney for Evolutionary Intelligence
`
`Gutride Safier LLP
`835 Douglass Street
`San Francisco, CA 94114
`Tel: (415) 639-9090
`Dir: (415) 505-6226
`Fax: (415) 449-6469
`anthony@gutridesafier.com
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`Dated: May 21, 2014
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`5
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`CERTIFICATE OF SERVICE
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that on May 21, 2014, a true
`and correct copy of the foregoing PATENT OWNER’S LIST OF PROPOSED
`MOTIONS is being served via email, by agreement between the parties, on the
`following:
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`
`
`
`
`
`Counsel for Third Party Requestor.
`Jeffrey P. Kushan & Douglas I. Lewis
`Sidley Austin LLP
`1501 K Street, N.W.,
`Washington, D.C. 20005
`jkushan@sidley.com
`dilewis@sidley.com
`
`
` /s/Anthony J. Patek/
`Anthony J. Patek. No. 66,463
`Attorney for Patent Owner
`
`Gutride Safier LLP
`835 Douglass Street
`San Francisco, CA 94114
`Tel: (415) 639-9090
`Dir: (415) 505-6226
`Fax: (415) 449-6469
`anthony@gutridesafier.com
`
`
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`6
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