Trials@uspto.gov Paper No. 10 Paper No. 13
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`571-272-7822
`Date Entered: June 3, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.
`Petitioner
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`v.
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`EVOLUTIONARY INTELLIGENCE, LLC
`Patent Owner
`____________
`
`Case IPR2014-00086
`Patent 7,010,536
`____________
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`
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`Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON,
`BRIAN J. McNAMARA, NEIL T. POWELL,
`and GREGG I. ANDERSON, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER DENYING PATENT OWNER’S REQUEST TO FILE MOTION FOR
`ADDITIONAL DISCOVERY
`37C.F.R. § 42.52
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`

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`Case IPR2014-00086
`Patent 7,010,536
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`An initial conference in IPR2014-00086, which involves U.S. Patent No.
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`7,010,536 (the “’536 Patent”), was conducted on May 23, 2014. Apple, Inc.
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`(“Petitioner”) was represented by Jeffrey Kushan. Evolutionary Intelligence, LLC
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`(“Patent Owner”) was represented by Anthony Patek. This paper concerns a
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`discussion during the conference of Patent Owner’s request for authorization to file
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`a motion for additional discovery. Other issues discussed during the initial
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`conference are summarized in a separate paper.
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`Patent Owner requested authorization to file a motion for additional
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`discovery in order to investigate whether Petitioner is coordinating its pursuit of
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`this proceeding with other parties Patent Owner has sued for alleged infringement
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`of the ’536 Patent. Patent Owner argues that, if such coordination is taking place,
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`another defendant could be a real party-in-in interest or a privy with Petitioner in
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`this proceeding, thus creating estoppel. Patent Owner argued that stays issued in
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`the district courts have prevented Patent Owner from taking discovery in those
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`proceedings on this issue. According to Patent Owner, invalidity contentions filed
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`by “Sprint” in one of the suits1 that is now stayed suggest that the defendants are
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`coordinating their efforts. Patent Owner did not discuss the details of the alleged
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`similarities between Sprint’s invalidity contentions in the district court and
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`Petitioner’s challenges in this proceeding or the extent of the alleged coordination.
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`Patent Owner argued that it should be permitted some discovery in this proceeding,
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`at least to the extent of any joint defense agreement between Petitioner and the
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`other parties Patent Owner sued in the district courts.
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`1 This appears to be a reference to Sprint Nextel Corporation, which is the
`defendant in Evolutionary Intelligence, LLC v. Sprint Nextel Corporation et al.
`5:13-cv-04513-RMW(N.D. Cal).
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`2
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`Case IPR2014-00086
`Patent 7,010,536
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`Petitioner responded that it has not been coordinating its efforts in this
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`proceeding with any other party and that Patent Owner’s conjecture does not meet
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`our threshold for discovery. Citing the Office Patent Trial Practice Guide,
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`Petitioner also notes that another party’s participation with Petitioner in a Joint
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`Defense Group in a patent infringement suit does not mean that the other party is a
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`real party-in-interest or a privy with Petitioner in this proceeding. See, Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012).
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`Petitioner also argued that estoppel with respect to a real party-in-interest or a
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`privy in proceedings before the office under 35 U.S.C. § 315(e)(1) or in civil
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`actions or in other proceedings under 35 U.S.C. § 315(e)(2) arises only after a final
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`written decision under 35 U.S.C. § 318(a). Thus, Petitioner contends that the
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`discovery Patent Owner seeks is premature.
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`We do not authorize Patent Owner’s filing of a motion for additional
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`discovery. In order to obtain discovery in this proceeding, Patent Owner must
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`already possess evidence tending to show beyond speculation that something
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`useful will be discovered. See, Garmin International, Inc. v. Cuozzo Speed
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`Technologies LLC, IPR2012-00001, Paper 26. Evidence that would be useful in
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`the context of qualifying a party as a real party-in-interest or a privy would tend to
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`show that the party funds or directs and controls this IPR proceeding, or has a
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`relationship with Petitioner that extends beyond participation in a Joint Defense
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`Group. Office Patent Trial Practice Guide, 77 Fed. Reg. at 48760. During the
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`teleconference, Patent Owner’s primary assertion was that the invalidity
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`contentions filed by a third party (Sprint) in a different proceeding in the district
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`court are similar to the challenges asserted by Petitioner in this proceeding.
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`Arguing that no other invalidity contentions have been filed in the stayed district
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`court proceedings, Patent Owner does not limit its discovery request to Sprint.
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`3
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`Case IPR2014-00086
`Patent 7,010,536
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`We are not convinced that Sprint’s filing in a district court of invalidity
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`contentions that are similar to Petitioner’s challenges in this inter partes review is
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`sufficient to show beyond speculation that something useful will be discovered to
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`indicate that the proceeding is controlled or directed by Sprint or that Sprint played
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`a role in this proceeding. Further, Sprint’s filing of invalidity contentions similar
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`to the challenges in this proceeding would not support our granting discovery
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`concerning other parties.
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`We also agree that the issue is not ripe for discovery. We have not rendered
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`a final decision in this matter. The district court cases are stayed and there are no
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`other proceedings before the Office. In these circumstances, there are no other
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`proceedings in which estoppel would apply. Granting Patent Owner discovery
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`about whether a defendant in any of the stayed lawsuits is a real party-in-interest or
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`a privy of Petitioner, would not resolve any issue in this or any other proceeding at
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`this time.
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`In consideration of the above, it is
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`ORDERED that Patent Owner’s request to file a Motion for Additional
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`Discovery is DENIED.
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`4
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`Case IPR2014-00086
`Patent 7,010,536
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`PETITIONER:
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`Jeffrey Kushan
`jkushan@sidley.com
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`PATENT OWNER:
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`Anthony Patek
`pto@gutridesafier.com
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`Todd Kennedy
`todd@guttridesafier.com
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`5
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