Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper No. 28
` Entered: June 16, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`____________
`
`Case IPR2014-00199
`Patent 6,771,970
`____________
`
`
`Before KRISTEN L. DROESCH, GLENN J. PERRY and
`SHERIDEN K. SNEDDEN, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper No. 28
` Entered: June 16, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`____________
`
`Case IPR2014-00199
`Patent 6,771,970
`____________
`
`
`Before KRISTEN L. DROESCH, GLENN J. PERRY and
`SHERIDEN K. SNEDDEN, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`Case IPR2014-00199
`Patent 6,771,970
`
`
`
`An initial conference call in the above proceeding was held on June
`13, 2014, among respective counsel for Petitioner and Patent Owner, and
`Judges Droesch, Perry and Snedden. The purpose of the call was to discuss
`the Scheduling Order (Paper 19) and the proposed motions of the parties
`(Papers 25 and 27). The following is a summary of the call.
`
`
`Scheduling Order
`Petitioner notes a typographical error in our Scheduling Order (Paper
`19), indicating that Due Date 4 should have been written as December 30,
`2014. We agree and appreciate Petitioner’s observation.
`
`
`Potential Joinder
`Petitioner filed a petition for inter partes review, IPR2014-00920
`(“’920 IPR”), on June 9, 2014, which has not yet been fully docketed.
`Petitioner filed in the ‘920 IPR a motion to join (Paper 4) with this inter
`partes review. Petitioner seeks authorization in this inter partes review to
`file a motion for joinder with the ’920 IPR and to modify the scheduling
`order (Paper 19) in this inter partes review as follows and to place the ’920
`IPR on the modified schedule of this inter partes review:
`Due Date Current Date
`Proposed Date
`1
`August 11, 2014
`October 13, 2014
`2
`November 10, 2014 December 13, 2014
`3
`December 9, 2014
`January 13, 2015
`4
`December 30, 2014
`February 3, 2015
`5
`January 13, 2015
`February 17, 2015
`6
`January 20, 2015
`February 24, 2015
`7
`February 3, 2015
`March 10, 2015
`
`
`
`
`
`2
`
`
`
`Case IPR2014-00199
`Patent 6,771,970
`
`
`Petitioner also seeks authorization to file a motion seeking
`acceleration of Patent Owner’s Response Due Date in the ’920 IPR to July
`22, 2014 to facilitate joinder.
`Patent Owner opposes joinder, indicating that the issues in the two
`IPRs are different and that no efficiencies will be gained by joining them.
`Further, Patent Owner would be prejudiced by having time taken away from
`thoughtful consideration of the issues raised in the ’920 Petition. The ’920
`IPR is now in its initial stages of formalities review. Unless taken out of
`turn, it is likely that a Patent Owner Preliminary Response would be due in
`September, 2014.
`The Parties report that related litigation against T-Mobile USA Inc.1
`(“T-Mobile”) and Sprint Nextel Corp.2 (“Sprint”) has not been stayed and
`that no motion to stay is pending. Discovery in the related litigation is due
`to close in August and a Markman Hearing is scheduled for October, 2014.
`At this time, we do not authorize any motions regarding joinder. We
`will take up the issue further upon our consideration of the ’920 IPR
`Petition.
`
`
`Additional Discovery Regarding Real Party in Interest
`Patent Owner seeks authorization to file a motion requesting
`additional discovery related to potential real parties in interest. According to
`Patent Owner, Petitioner Location Labs is an indemnitor of T-Mobile and
`Sprint. Petitioner’s Counsel indicates that it is also representing T-Mobile
`
`1 CallWave Communications, LLC, v. T-Mobile USA Inc. and Google, Inc.,
`Civil Action No. 1:12-cv-01703-RGA (D. Del.).
`2 CallWave Communications, LLC, v. Sprint Nextel Corp. and Google, Inc.,
`Civil Action No. 1:12-cv-01702-RGA (D. Del.).
`
`
`
`3
`
`
`
`Case IPR2014-00199
`Patent 6,771,970
`
`and Sprint. Patent Owner alleges a “plausible connection” between Location
`Labs and these entities and seeks discovery regarding that relationship,
`particularly with regard to any indemnification agreement by Location Labs
`that might include terms related to control and funding of these IPR
`proceedings by T-Mobile and Sprint.
`Petitioner indicates that the same discovery issue is being contested in
`District Court and that a hearing is scheduled for June 26, 2014 before a
`Magistrate Judge. Petitioner objects to being subject to multiple discovery
`requests in different forums and that the appropriate forum for determining
`this issue is the District Court.
`In view of the facts disclosed during the conference call, and the
`potential significance of a real party in interest not yet identified, Patent
`Owner is authorized to file a motion for additional discovery related to this
`relationship. However, this authorization does not mean that any such a
`motion will be granted. Patent Owner is cautioned that such motions are
`only granted if they are targeted and specific (e.g., a particular agreement).
`The Board considers various factors in determining whether requested
`additional discovery meets the standard of “necessary in the interest of
`justice” under 35 U.S.C. § 316(a)(5), including the following factors set
`forth in Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC, Case
`IPR2012-00001 (PTAB Mar. 5, 2013) (Paper No. 26) slip. op. at 6-7: (1) the
`request is based on more than a mere possibility of finding something useful;
`(2) the request does not seek the litigation positions of the other party; (3)
`the information is not reasonably available through other means; (4) the
`request is easily understandable; and (5) the request is not overly
`
`
`
`4
`
`
`
`Case IPR2014-00199
`Patent 6,771,970
`
`burdensome to answer. Wide-ranging discovery requests are not likely to be
`granted.
`
`
`Motion to Amend
`Patent Owner indicates that it may file a Motion to Amend Claims.
`Patent Owner indicates that this potential motion is forward looking and that
`it is not prepared to file such a motion at this time. We provide the
`following guidance.
`Authorization is not needed for filing a first motion to amend. Before
`such a motion is filed, however, Patent Owner is directed to seek a telephone
`conference with the panel two weeks in advance of any such proposed
`motion to discuss the motion. See 37 C.F.R § 42.121(a). The parties are
`further directed to the guidance provided in Case IPR2012-00027, Paper 26,
`dated June 11, 2013 (“Idle Free”), Case IPR2013-00423, Paper 27, dated
`March 7, 2014 (“Toyota Motor Corporation”); and Case IPR2013-00124,
`Paper 12, dated May 20, 2014 (“Int’l Flavors”). It is also suggested that
`Patent Owner become familiar with PTAB’s Trial Practice Guide Section G
`and with rule 42.121.
`
`
`Observations on Cross-Examination Testimony
`Patent Owner indicates that it may wish to file a motion for
`observations on cross-examination testimony of Petitioner’s reply witnesses.
`Patent Owner is invited, at the appropriate time, to seek such authorization
`after all predicate conditions have been met and such authorization would be
`timely.
`
`
`
`
`5
`
`
`
`Case IPR2014-00199
`Patent 6,771,970
`
`
`Motion to Exclude Evidence
`Patent Owner indicates that it may wish to file a motion to exclude
`evidence, but indicates that this is a forward looking motion. At present,
`Patent Owner does not seek to exclude evidence already of record.
`Therefore, no authorization at this time is required.
`The parties are reminded that a motion to exclude is available to a
`party wishing to challenge the admissibility of evidence and to preserve an
`objection made previously. See Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,767 (Aug. 14, 2012). A party following these guidelines
`may file a motion to exclude without prior authorization from the Board.
`The rule specifies as much and explains that a motion to exclude must
`identify the objections in the record and must explain the objections. 37
`C.F.R. § 42.64(c). Prior to filing a motion to exclude, a party objecting to
`evidence serves (but does not file with PTAB) such objection on the other
`party. This triggers an opportunity for the other party to cure whatever
`defect triggered the objection. In the event that an objection remains after
`this process, a party may seek authorization to file a motion to exclude.
`The parties are invited, at the appropriate time, to seek such
`authorization after all predicate conditions, including those of 37 C.F.R.
`§ 42.64(c), have been met.
`
`
`Settlement
`The parties report that the last settlement discussions were several
`months ago. There is no imminent settlement.
`
`
`
`
`6
`
`
`
`Case IPR2014-00199
`Patent 6,771,970
`
`
`ORDER
`
`It is hereby
`ORDERED that Paper 19 is modified hereby to the extent that DUE
`DATE 4 is “December 30, 2014;”
`FURTHER ORDERED that Patent Owner is authorized to file a
`Motion for Additional Discovery. Such motion shall be limited and targeted
`as set forth above;
`FURTHER ORDERED that no further motions are authorized at this
`
`time.
`
`
`
`PETITIONER
`Mark L. Hogge
`Scott W. Cummings
`DENTONS US LLP
`mark.hogge@dentons.com
`scott.cummings@dentons.com
`
`PATENT OWNER:
`
`Thomas Engellenner
`Reza Mollaaghababa
`PEPPER HAMILTON LLP
`
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`
`
`
`
`7
`
`
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