By: Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`
`
`
`
`
`
`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 No. IPR2014-00199
`U.S. Patent 6,771,970
`___________________
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`
`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`PRECISE RELIEF REQUESTED ................................................................. 1
`
`FACTUAL BACKGROUND......................................................................... 1
`
`A. AT&T, T-Mobile and Sprint Have A Direct Interest In and
`Relationship With The Petitioner and This IPR ................................... 1
`
`B.
`
`C.
`
`Indemnification and Joint Defense/Common Interest
`Agreements Likely Exist Between Petitioner and Its Customers,
`AT&T, T-Mobile, and Sprint ............................................................... 2
`
`Petitioner Has Made Contradictory Representations To The
`Board and The District Court To Thwart Discovery Obligations
`Regarding The Real Parties-In-Interest ................................................ 5
`
`III. REASONS FOR THE RELIEF REQUESTED ............................................. 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Patent Owner Can Demonstrate More than a Mere
`Possibility and a Mere Allegation that Useful Discovery
`Will Be Found. ........................................................................... 6
`
`Discovery Does Not Seek Litigation Positions and
`Underlying Factual Basis. .......................................................... 9
`
`No Ability to Generate Equivalent Information By Other
`Means. ...................................................................................... 10
`
`Easily Understandable Instructions. ........................................ 11
`
`Requests Are Not Overly Burdensome To Answer ................. 12
`
`IV. CONCLUSION ............................................................................................. 12
`
`
`
`
`
`-i-
`
`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Asahi Glass Co. v. Toledo Eng’g Co., 505 F. Supp. 2d 423 (N.D. Ohio 2007) ........ 8
`
`Page(s)
`
`CallWave Communications, LLC v. AT&T Mobility, LLC, and Google, Inc.,
`Civil Action No. 1:12-cv-01701-RGA (D. Del) ................................................... 1
`
`CallWave Communications, LLC v. AT&T Mobility, LLC, and Google, Inc.,
`Civil Action No. 1:12-cv-01701-RGA (D. Del) ................................................... 4
`
`CallWave Communications, LLC v. Sprint Nextel Corp. and Google, Inc.,
`Civil Action No. 1:12-cv-01702-RGA (D. Del) ................................................... 1
`
`CallWave Communications, LLC v. T-Mobile USA Inc. and Google, Inc.,
`Civil Action No. 1:12-cv-01703-RGA (D. Del) ............................
`
`1
`
`CallWave Communications, LLC v. Wavemarket, Inc. d.b.a. Location Labs,
`Case No. MC 14-80112-JSW-LB (D. Del.) ......................................................... 3
`
`In re Echostar Comms. Corp., 448 F.3d 129, (Fed. Cir. 2006) ................................. 9
`
`In re Guan, Control No. 95/001,045, Decision Vacating Filing Date (Aug.
`25, 2008) ........................................................................................................... 7,8
`
`Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC, Case No.
`IPR2012-00001, Paper No. 26 (P.T.A.B. Mar. 5, 2013) .......................... 6, 11, 12
`
`Phelps v. Hamilton, 122 F.3d 1309 (10th Cir. 1997) ................................................ 8
`
`Zoll LifeCor Corp. v. Philips Electronics North America Corp. et al.,
`IPR2013-00616, Paper 17 (March 20, 2014) ...................................................... 8
`
`STATUTES
`35 U.S.C. § 312(a)(2) ................................................................................................ 7
`
`35 U.S.C. § 315(b) .................................................................................................... 9
`
`35 U.S.C. § 316(a)(5) ................................................................................................ 6
`
`-ii-
`
`

`

`OTHER AUTHORITIES
`
`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`
`37 C.F.R. § 42.52(a) ................................................................................................... 1
`
`37 C.F.R. § 42.51 (b)(2) ............................................................................................ 1
`
`37 C.F.R. § 42.101(b) ................................................................................................ 9
`
`Office Patent Trial Practice Guide, 77 Federal Register 157 (Aug. 14, 2012),
`pp. 48756-773 ............................................................................................... 7, 8, 9
`
`-iii-
`
`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`
`PATENT OWNER’S EXHIBITS
`
`Description
`
`Proposed interrogatories and associated document requests
`
`Sprint’s Answer to CallWave’s Complaint in CallWave
`Communications, LLC v. Sprint Nextel Corp. and Google, Inc., Civil
`Action No. 1:12-cv-01702-RGA (D. Del)
`
`T-Mobile’s Answer to CallWave’s Complaint in CallWave
`Communications, LLC v. T-Mobile USA Inc. and Google, Inc., Civil
`Action No. 1:12-cv-01703-RGA (D. Del).
`
`Defendants’ Motion To Stay Pending Inter Partes Review.
`
`Subpoena to Wavemarket, Inc., d/b/a Location Labs in the matter of
`CallWave Communications, LLC v. Wavemarket, Inc. d.b.a. Location
`Labs, Case No. MC 14-80112-JSW-LB (D. Del).
`
`April 8, 2014 letter from counsel for Petitioner with objections and
`responses to Petitioner’s subpoena.
`
`Petitioner’s Objections and Responses to CallWave’s Subpoena in
`CallWave Communications, LLC v. AT&T Mobility, LLC, and
`Google, Inc., Civil Action No. 1:12-cv-01701-RGA (D. Del).
`
`April 9, 2014, Hearing Transcript in the matter of CallWave
`Communications, LLC v. Wavemarket, Inc. d.b.a. Location Labs, Case
`No. MC 14-80112-JSW-LB (D. Del).
`
`April 17, 2013, Copy of email from Edward M. Abbati, Vice
`President of Finance for Petitioner, to Richard Sanders, Chief
`Executive Officer (“CEO”) of Callwave Communications, LLC.
`
`Proposed Protective Order submitted in CallWave Communications,
`LLC v. Wavemarket, Inc. d.b.a. Location Labs, Case No. MC 14-
`80112-JSW-LB (D. Del.).
`
`Ex. #
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`-iv-
`
`

`

`Ex. #
`
`2014
`
`2015
`
`Description
`
`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`
`AT&T Answer to CallWave’s Second Amended Complaint in
`CallWave Communications, LLC v. AT&T Mobility, LLC, and
`Google, Inc., Civil Action No. 1:12-cv-01701-RGA (D. Del).
`
`Defendants’ Reply Brief In Support of Their Motion to Stay
`Proceedings on the ‘970 Patent Pending Inter Partes Review by the
`Patent Trial and Appeal Board.
`
`-v-
`
`

`

`I.
`
`PRECISE RELIEF REQUESTED
`
`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`
`Patent Owner LocationNet Systems, Ltd. (“LocationNet” or “Patent
`
`Owner”) requests that the Board authorize the targeted discovery from Petitioner
`
`Wavemarket Inc. d/b/a Location Labs (“Petitioner”) contained in Exhibit 2004
`
`(“Ex.”), which consists of a limited number of document requests, one
`
`interrogatory, and a notice of deposition. See 37 C.F.R. §§ 42.51 (b)(2), 42.52(a).
`
`This motion is filed in accordance with the Board’s June 16, 2014 Order (Paper
`
`28).
`
`II.
`
`FACTUAL BACKGROUND
`A. AT&T, T-Mobile and Sprint Have A Direct Interest In and
`Relationship With The Petitioner and This IPR
`
`There is strong evidence that Petitioner filed this IPR solely for the
`
`benefit of its customers, AT&T, T-Mobile, and Sprint who are accused of patent
`
`infringement in related district court litigations, CallWave Communications, LLC
`
`v. Sprint Nextel Corp. and Google, Inc., Civil Action No. 1:12-cv-01702-RGA
`
`(D.Del); CallWave Communications, LLC v. T-Mobile USA Inc. and Google, Inc.,
`
`Civil Action No. 1:12-cv-01703-RGA (D. Del); and CallWave Communications,
`
`LLC v. AT&T Mobility, LLC, and Google, Inc., Civil Action No. 1:12-cv-01701-
`
`RGA (D. Del.). As such, AT&T, T-Mobile, and Sprint have a direct interest in and
`
`relationship with the Petition, not least because the Petition directly affects the
`
`outcome of their respective litigations. See, e.g., Ex. 2005 (Sprint asserting in its
`
`-1-
`
`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`Answer a defense of invalidity against the ‘970 patent); Ex. 2006 (T-Mobile
`
`asserting in its Answer a defense of invalidity against the ‘970 patent); Ex. 2014 at
`
`12 (AT&T asserting in its Answer a defense of invalidity against the ‘970 patent);
`
`Ex. 2007, Defendants’ Motion To Stay Pending Inter Partes Review (motion filed
`
`by AT&T, Sprint and T-Mobile, among others, request a stay of all matters relating
`
`to the ‘970 patent pending this IPR).
`
`B.
`
`Indemnification and Joint Defense/Common Interest Agreements
`Likely Exist Between Petitioner and Its Customers, AT&T, T-
`Mobile, and Sprint
`
`On April 17, 2013, Edward M. Abbati, Vice President of Finance for
`
`Petitioner, sent an e-mail to Richard Sanders, Chief Executive Officer (“CEO”) of
`
`Callwave Communications, LLC (“CallWave”), which is the exclusive licensee of
`
`the ‘970 patent. See Ex. 2012. In this e-mail, Mr. Abbati requested to have a
`
`discussion with Mr. Sanders regarding the patent infringement lawsuits that
`
`Callwave had brought against AT&T, T-Mobile, and Sprint concerning the ‘970
`
`patent. Mr. Abbati further informed Mr. Sanders that “[a]ll three of these
`
`companies are Location Labs [sic] customers.” Mr. Abbati also informed Mr.
`
`Sanders that the Petitioner provides the “Family Locator service” to these
`
`companies, “which they sell to their subscribers and it is the same service that is
`
`being implicated in your [Callwave] lawsuit relating to Patent ‘970.” At the very
`
`least, this e-mail corroborates the existence of indemnification and joint
`
`-2-
`
`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`defense/common interest agreements between Petitioner and AT&T, T-Mobile,
`
`and Sprint.
`
`Additionally, AT&T, T-Mobile, and Sprint have a direct interest in
`
`and relationship with the Petition because AT&T, T-Mobile, Sprint, and Petitioner
`
`are all represented by counsel from the same law firm. See Exs. 2005, 2006, and
`
`2014. Moreover, Mark Hogge of Dentons, is not only lead litigation counsel for
`
`Sprint and T-Mobile, but also lead counsel for Petitioner, Location Labs, in this
`
`IPR. See Exs. 2005,2006.
`
`As indicated in Mr. Abbati’s e-mail (Ex. 2012), Petitioner has a
`
`contractual relationship with AT&T, T-Mobile, and Sprint pertaining to the use of
`
`a location determining service which is alleged to infringe the ‘970 patent.
`
`Furthermore, Petitioner has admitted in its April 8, 2014 letter response to a
`
`subpoena issued in the related district court litigation (Ex. 2008) that it has an
`
`indemnification obligation to its customers, which include AT&T, T-Mobile, and
`
`Sprint. Specifically, on February 10, 2014, Patentee subpoenaed Petitioner
`
`requesting documents and communications
`
`relating
`
`to “indemnification
`
`obligations, duty, or request related to any Defendant…” as well as documents
`
`relating to “indemnification obligations owed to [Petitioner].” See Ex. 2008 at
`
`Requests 10 and 11, Subpoena to Wavemarket, Inc., d/b/a Location Labs in the
`
`-3-
`
`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`matter of CallWave Communications, LLC v. Wavemarket, Inc. d.b.a. Location
`
`Labs, Case No. MC 14-80112-JSW-LB.
`
`In its April 8, 2014 letter, Petitioner responded that “With regard to
`
`Request Nos. 10 and 11, subject to its Objections and Responses and the further
`
`qualifications set forth in this letter, Location Labs will produce the agreements
`
`between Location Labs and its customers once we have an agreement with
`
`CallWave on payment for costs.” See Ex. 2009 at p. 4, April 8, 2014 letter from
`
`counsel for Petitioner with objections and responses to Petitioner’s subpoena
`
`(emphasis added); see also Ex. 2008 at Response to Request Nos. 10-12 (objecting
`
`to document requests relating to indemnification obligations, but not denying the
`
`existence of such agreements).
`
`Additionally, Petitioner has explicitly admitted that there exist joint
`
`defense and/or common interest agreements with its customers, which include
`
`AT&T, T-Mobile, and Sprint. See also Ex. 2010 (Petitioner’s Objections and
`
`Responses to CallWave’s subpoena in CallWave Communications, LLC v. AT&T
`
`Mobility, LLC, and Google, Inc., Civil Action No. 1:12-cv-01701-RGA (D. Del) at
`
`pp. e.g., 12-15 (Location Labs objecting to document requests “to the extent that it
`
`calls for the disclosure of information protected by the attorney-client privilege,
`
`attorney work product doctrine, joint defense privilege, common interest
`
`privilege, and any other applicable privileges…”); See also id. at Response to
`
`-4-
`
`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`Request Nos. 15-16 (Petitioner not denying the existence of joint defense
`
`agreement
`
`in
`
`its objections
`
`to document requests seeking
`
`joint defense
`
`agreements). As of the filing of this motion, however, Petitioner has not produced
`
`any documents, and has tactically delayed any production.
`
`C.
`
`Petitioner Has Made Contradictory Representations To The
`Board and The District Court To Thwart Discovery Obligations
`Regarding The Real Parties-In-Interest
`
`Petitioner’s gamesmanship in avoiding discovery has spun out of
`
`control, as illustrated by Petitioner’s recent conflicting representations to the Board
`
`and the district court. Specifically, in the June 16 Order (Paper 28), the Board
`
`summarized Petitioner’s position stated at the June 13, 2014, initial conference as
`
`follows:
`
`Petitioner [Location Labs] 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.
`
`See Paper 28 at 4 (emphasis added). In stark contrast, Petitioner argued in its July
`
`14, 2014 Reply Brief in support of a motion to stay that:
`
`-5-
`
`

`

`The Court should also give no weight to CallWave’s complaint
`
`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`
`that if this case is stayed it will not get the discovery it needs
`
`regarding the IPR proceeding. If the case is stayed, CallWave
`
`can seek discovery in those separate proceedings. Moreover,
`
`certain Defendants are providing discovery concerning
`
`their relationship with Location Labs.
`
`Ex. 2015 (Defendants’ Reply Brief In Support of Their Motion to Stay Proceedings
`
`on the ‘970 Patent Pending Inter Partes Review by the Patent Trial and Appeal
`
`Board) at 6 (emphasis added). To date, no discovery has been produced.
`
`Petitioner’s “hide the ball” tactic should not be endorsed and it has resulted in
`
`severe prejudice to Patent Owner.
`
`III. REASONS FOR THE RELIEF REQUESTED
`Patentee’s discovery requests are “necessary in the interest of justice,”
`
`35 U.S.C. § 316(a)(5), and, as explained below, meet each of the five factors set
`
`forth in Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC, Case No.
`
`IPR2012-00001, Paper No. 26 at 6-7 (P.T.A.B. Mar. 5, 2013).
`
`1.
`
`Patent Owner Can Demonstrate More than a Mere
`Possibility and a Mere Allegation that Useful Discovery Will
`Be Found.
`
`Patentee’s discovery narrowly focuses on the nature and scope of the
`
`relationship between Petitioner, AT&T, T-Mobile and Sprint as it pertains to this
`
`-6-
`
`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`IPR. See Ex. 2004. In particular, the requests seek indemnification agreements
`
`and joint defense/common interest agreements between Petitioner, AT&T, T-
`
`Mobile and Sprint, and communications and payments or payment obligations
`
`between Petitioner, AT&T, T-Mobile, and Sprint, which are relevant to show
`
`AT&T, T-Mobile and Sprint’s involvement and/or funding of this IPR.
`
`As described above, the discovery is based on the admitted existence
`
`of indemnification obligations (Ex. Ex. 2009 at p. 4 (Petitioner admitting that it
`
`“will produce the [indemnification] agreements between Location Labs and its
`
`customers”) and joint defense/common interest agreements (Ex. 2010 at pp. 12-15
`
`and Response to Request Nos. 15-16 (objecting to document requests relating to
`
`joint defense agreements, but not denying the existence of such agreements)). The
`
`discovery is calculated to render useful information that is favorable to Patentee’s
`
`contention that the Petition should be dismissed under 35 U.S.C. § 312(a)(2) for
`
`failing to identify at least AT&T, T-Mobile, and Sprint as real parties-in-interest.
`
`Accordingly, Patent Owner has more than a mere possibility or mere allegation
`
`that useful discovery will be found.
`
`Each discovery request seeks information related to the factors
`
`concerning real party-in-interest/privy set forth in the Office Patent Trial Practice
`
`Guide (“TPG”) and In re Guan. See TPG, 77 Federal Register 157 (Aug. 14,
`
`2012), pp. 48756-773, at 48759-60; In re Guan, Control No. 95/001,045, Decision
`
`-7-
`
`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`Vacating Filing Date (Aug. 25, 2008) at 8. The issues of “sole discretion,”
`
`“control,” and funding are integral aspects of the real party-in-interest/privy
`
`inquiry. See Guan; TPG at 48759-60 (“Courts invoke the terms ‘real party-in-
`
`interest’ and ‘privy’ to describe relationships and considerations sufficient to
`
`justify applying conventional principles of estoppel and preclusion.”); see also Zoll
`
`LifeCor Corp. v. Philips Electronics North America Corp. et al., IPR2013-00616,
`
`Decision Denying Institution of Inter Partes Review (March 20, 2014), Paper 17 at
`
`10 (“The determination of whether a non-party is a real party-in-interest involves a
`
`consideration of ‘control.’”) citing TPG at 48759.
`
`In addition, the fact that Petitioner, AT&T, T-Mobile, and Sprint share
`
`counsel further underscores the need for the discovery sought. “[T]he existence of
`
`shared counsel supports a finding of privity where other factors present suggest
`
`that a unique relationship exists between the two parties.” Asahi Glass Co. v.
`
`Toledo Eng’g Co., 505 F. Supp. 2d 423, 436 (N.D. Ohio 2007) (finding “the
`
`combination of three factors - the Indemnification Agreement, the Joint Defense
`
`Agreement, and shared counsel - demonstrates that TECO and Schott are in
`
`privity.”); see also Phelps v. Hamilton, 122 F.3d 1309, 1319 (10th Cir. 1997)
`
`(“control need not be exercised directly by the non-litigating party. It is sufficient
`
`that the choices were in the hands of counsel responsible to the controlling person;
`
`-8-
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`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`moreover, the requisite opportunity may exist even when it is shared with other
`
`persons.”) (internal quotations omitted).
`
`Moreover, Petitioner should not be able to object on the basis of any
`
`privilege, especially when Petitioner has selectively chosen to disclose certain
`
`information while withholding other information in the Petition and during the
`
`teleconferences. See In re Echostar Comms. Corp., 448 F.3d 1294, 1301 (Fed. Cir.
`
`2006). It would be extremely prejudicial to Patentee to allow Petitioner to
`
`selectively offer information and not allow Patentee to seek additional information.
`
`And even if Petitioner were to claim privilege, the appropriate response would be
`
`to provide redacted documents and a privilege log.
`
`2.
`
`Discovery Does Not Seek Litigation Positions and
`Underlying Factual Basis.
`
`As is evident in Exhibit 2004, Patent Owner’s requests do not seek
`
`Petitioner’s litigation strategy, contentions, or the underlying basis therefor.
`
`Patentee also does not seek to prematurely learn Petitioner’s and AT&T, T-Mobile,
`
`or Sprint’s positions in this IPR. Proper identification of real parties-in-interest or
`
`privies is a threshold issue under 35 U.S.C. § 315(b) and 37 C.F.R. § 42.101(b), so
`
`addressing the issue is warranted. See TPG at 48759.
`
`-9-
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`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`No Ability to Generate Equivalent Information By Other
`Means.
`
`3.
`
`Patentee’s discovery requests narrowly target information that is not
`
`publicly available about indemnification agreements and joint defense/common
`
`interest agreements between Petitioner, AT&T, Sprint, and T-Mobile. Although
`
`Patentee subpoenaed Petitioner in the district court, seeking discovery of
`
`indemnification and joint defense agreements with Petitioner’s customers (Ex.
`
`2008 at Requests 10 – 12 (requests directed to indemnification obligations) and
`
`Requests 15-16 (requests directed to joint defense agreements, among others)),
`
`Petitioner has refused to produce discovery here. See Paper 28 at 4 (“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.”); see also, in
`
`contrast, Ex. 2015 at p. 6 (Petitioner stating that “If the [district court] case is
`
`stayed, CallWave can seek discovery in those separate proceedings…”)
`
`(emphasis added).
`
`Even if Petitioner is compelled to provide discovery in the district
`
`court, the discovery will be subject to the district court’s protective order, which
`
`precludes using confidential information in any proceeding other than the
`
`-10-
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`Case No. IPR2014-00199
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`
`litigation. See Ex. 2013 (Draft Protective Order) at ¶ 5.A (“All Protected
`
`Information shall be held in confidence by each person to whom it is disclosed,
`
`shall be used only for purposes of this litigation, shall not be used for any business
`
`purpose or in connection with any other legal proceeding, and shall not be
`
`disclosed to any person who is not entitled to receive such information as herein
`
`provided.”). Additionally, the protective order also bars “any person reviewing, on
`
`behalf of Plaintiff,” confidential information from working on “post-grant review
`
`proceedings1.” See Ex. 2011 at 40:22-41:4, April 9, 2014, Hearing Transcript
`
`(Judge Andrews adopting defendants’ proposal to extend the prosecution bar to
`
`apply to “post-grant proceedings.”); see also Ex. 2013 at ¶ 2.A (Proposed draft
`
`Prosecution Bar). Moreover, resolving discovery issues in the district court will
`
`take time. Indeed, Petitioner was served with a subpoena on February 10, 2014
`
`(Ex. 2008), but Petitioner has yet to produce any responsive information.
`
`Easily Understandable Instructions.
`4.
`Patent Owner’s instructions (see Ex. 2004) are easily understandable
`
`and are based on the instructions already approved by the Board in Garmin.
`
`IPR2012-00001, Paper No. 26 at 14.
`
`
`1 “Post –grant proceedings” in the context of the district court hearing
`
`includes this IPR. See Ex. 2011 at, e.g., 10, 12, 21, 33, and 36.
`
`-11-
`
`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`
`Requests Are Not Overly Burdensome To Answer
`
`5.
`Patent Owner’s limited requests are narrowly tailored and seek only a
`
`small, specific set of materials concerning the relationship between Petitioner,
`
`AT&T, T-Mobile, and Sprint that goes to the crux of the real party-in-
`
`interest/privy issues in this case. See Ex. 2004. Moreover, Petitioner has
`
`previously agreed to produce “agreements between Location Labs and its
`
`customers”. once we have an agreement with CallWave on payment for costs.”
`
`See Ex. 2009 at p. 4. Thus, any alleged financial, human resource, or time burden
`
`on Petitioner should be negligible. See Garmin, IPR2012-00001, Paper 26 at 7.
`
`IV. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the
`
`Board allow the discovery in Exhibit 2004.
`
`Dated: July 16, 2014
`
`
`
`Respectfully submitted,
`
`By:
` /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`engellennert@pepperlaw.com
`
` Reza Mollaaghababa, Reg. No. 43,810
`mollaaghababar@pepperlaw.com
` Pepper Hamilton LLP
`
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`-12-
`
`

`

`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on July 16, 2014, a true and accurate copy of this paper,
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY, and
`accompanying Exhibits 2004-2015 were served on the following counsel for
`Petitioner WaveMarket, Inc. via email and Federal Express Mail:
`
`
`
`Mark L. Hogge (mark.hogge@dentons.com)
`Scott W. Cummings (scott.cummings@dentons.com)
`Dentons US LLP
`1301 K Street, N.W., Suite 600
`Washington DC 20005
`Tel: (202) 408-6400
`Fax: (202) 4086399
`
`
`Dated: July 16, 2014
`
`
`
`Respectfully submitted,
`
`By:
` /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`engellennert@pepperlaw.com
`
` Reza Mollaaghababa, Reg. No. 43,810
`mollaaghababar@pepperlaw.com
` Pepper Hamilton LLP
`
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`
`
`
`
`-13-
`
`