`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 31
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` Entered: May 21, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`INNOLUX CORPORATION
`Petitioner
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`v.
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`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`_______________
`
`Case IPR2013-00028 (SCM)
`Patent 6,404,480 B2
`_______________
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KEVIN F. TURNER, Administrative Patent Judges.
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`MEDLEY, Administrative Patent Judge.
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`
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`DECISION
`Motion for Additional Discovery
` 37 C.F.R. § 42.51
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`INTRODUCTION
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`Semiconductor Energy Laboratory Co., Ltd. (“SEL”) filed a motion
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`for additional discovery. Paper 28 (“Motion”). Innolux Corporation
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`(“Innolux”) filed an opposition. Paper 30 (“Opposition”). The motion is
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`Case IPR2013-00028
`Patent 6,404,480 B2
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`denied.
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`BACKGROUND
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`SEL seeks additional discovery relating to whether Innolux identified
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`all of the real parties-in-interest in connection with the filing of the petition.
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`Motion 1. SEL seeks from Innolux certain production requests (Ex. 2021),
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`interrogatories (Ex. 2022), and requests for admissions (Ex. 2023).
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`ANALYSIS
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`Under the Leahy-Smith America Invents Act, discovery is available
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`for the deposition of witnesses submitting affidavits or declarations and for
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`“what is otherwise necessary in the interest of justice.” 35 U.S.C.
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`§ 316(a)(5); see also 37 C.F.R. § 42.51(b)(2)(“The moving party must show
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`that such additional discovery is in the interests of justice ….”). Clear from
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`the legislative history is that discovery should be limited; and that the PTO
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`should be conservative in its grant of additional discovery in order to meet
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`time imposed deadlines. 154 Cong. Rec. S9988-89 (daily ed. Sept. 27,
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`2008) (statement of Sen. Kyl).
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`As explained in the order authorizing SEL’s motion for additional
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`discovery,
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`[T]he factors set forth in the “Decision - On Motion For
`Additional Discovery” entered in IPR2012-00001 (Paper 26 at
`6-7) are important factors in determining whether a discovery
`request meets the statutory and regulatory necessary “in the
`interest of justice” standard. Accordingly, SEL’s motion
`should explain with specificity the discovery requested and why
`such discovery is necessary “in the interest of justice” using
`those factors. In that regard, SEL should not expect the Board
`to attempt to sort through a list of items to ascertain which
`items may meet the necessary in the interest of justice standard.
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`2
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`Case IPR2013-00028
`Patent 6,404,480 B2
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`SEL bears the burden to demonstrate that the additional
`discovery (e.g., each requested item) should be granted. See 37
`C.F.R. § 42.20(c).
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`Paper 25 (“Order”).
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`In its motion, SEL addresses the factors set forth in the “Decision –
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`On Motion For Additional Discovery” entered in IPR2012-00001 (Paper 26
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`at 6-7). As previously explained, those factors are important in determining
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`whether a discovery request meets the statutory and regulatory necessary in
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`the interest of justice standard. Order 4. We have considered every item of
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`the discovery request along with SEL’s arguments for why the requested
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`discovery is necessary in the interest of justice. However, based on the
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`record before us, SEL has not met its burden to show that the additional
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`discovery is necessary in the interest of justice.
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`In this proceeding, SEL has consistently argued, directing us to certain
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`evidence, that Innolux is not the sole real party-in-interest representing the
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`petitioner. Prelim. Resp. 11; Rehearing Req. 20. The Board considered the
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`arguments and evidence, but was not persuaded by such arguments. Dec.
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`Institution 7-9; Dec. Rehearing 7-9. In its motion for additional discovery,
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`SEL relies on the same already-considered arguments and evidence to
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`demonstrate that there exists more than a mere possibility or mere allegation
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`that something useful will be found if it is granted leave to seek certain items
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`from Innolux. Motion 2-3. Specifically, SEL argues that the evidence
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`already submitted into record in this proceeding supports its contention that
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`parties, in addition to Innolux, participated in the filing of the petition.
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`Motion 3. However, we have previously addressed why the arguments and
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`evidence are not persuasive. Dec. Institution 7-9; Dec. Rehearing 7-9.
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`Merely making the same arguments and directing us to the same evidence is
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`3
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`Case IPR2013-00028
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`not enough to show that, if the motion is granted, SEL will uncover
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`something useful.1 SEL has not explained how the same evidence or
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`reasoning does tend to show that something useful will be uncovered.
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`For instance, SEL argues that because Innolux’s backup counsel in
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`this proceeding, Mr. Cordrey, also represents some of the co-defendants in a
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`related litigation2 the co-defendants have had an opportunity to exercise
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`control of the instant Petition. Motion 3. Yet, SEL has not shown that just
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`because Innolux’ s backup counsel, Mr. Cordrey, represents some of the co-
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`defendants in the related litigation that that means the co-defendants have
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`exercised control of this proceeding in any manner. As Innolux points out in
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`its opposition, the record includes representations from its registered
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`practitioners, including Mr. Cordrey, that the real party-in-interest
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`information is correct and has not changed, and that those same
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`practitioners, again including Mr. Cordrey, understand that they are under a
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`continuing duty of candor to update any changes in the representations that
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`they have made. Opposition 2. In contrast, SEL has not directed us to
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`evidence or provided sufficient reasoning to show that Mr. Cordrey has
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`sought or accepted advice, input, money or anything else from any of the co-
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`defendants in support of Innolux’ s participation in this proceeding. SEL’s
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`reasoning is based on mere speculation and each item SEL seeks in its
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`motion for additional discovery is adversely affected by such speculation.
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`We have also considered SEL’s arguments that certain statements and
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`admissions support SEL’s contention “that parties in addition to CMI
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`1 Useful means favorable in substantive value to a contention of the party
`moving for discovery. IPR2012-00001 (Paper 26 at 7-8).
`2 Semiconductor Energy Laboratory Co., Ltd v. Chimei Innolux Corp., et al.,
`SAVC12-0021-JST (C.D. Cal.) (filed Jan 5, 2012).
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`4
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`Case IPR2013-00028
`Patent 6,404,480 B2
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`participated in the filing of the instant Petition.” Motion 3. Those
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`“statements and admissions” have been considered by the Board on at least
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`two occasions. Dec. Institution 7-9; Dec. Rehearing 7-9. SEL has not
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`demonstrated that the same already-considered “statements and admissions”
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`tend to show that SEL will uncover something useful that supports their
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`theory that Innolux is not the sole real party-in-interest. The statements and
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`admissions are ambiguous, and as we previously explained, those statements
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`and admissions do not establish that others exercised control and/or funding
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`of this proceeding. Dec. Institution 8; Dec. Rehearing 8. We have
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`considered SEL’s argument that since the Board has determined that the
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`statements are ambiguous SEL should be allowed to probe behind the
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`statements. Motion 4. That argument is misplaced. In a motion for
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`additional discovery, the moving party must first present some showing that
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`it will uncover something useful before the Board can determine whether to
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`authorize the moving party to seek additional discovery. Such a showing is
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`needed to meet the necessary in the interest of justice statutory and
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`regulatory requirement. That showing must be based on something more
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`than a mere possibility or mere allegation. Here, SEL has not demonstrated
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`that something useful will be uncovered if it is allowed to seek additional
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`discovery (the items listed in Exs. 2021, 2022, and 2023) from Innolux.
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`Moreover, Innolux’s representations before the Board that Innolux is the
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`sole real party-in-interest in this proceeding (Opposition 2) weighs in favor
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`of denying SEL’s motion for additional discovery.
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`SEL addresses the other factors set forth in the IPR2012-00001
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`Decision to show that the additional discovery should be granted. Motion 5.
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`Even considering those factors in SEL’s favor, for reasons provided above,
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`5
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`Case IPR2013-00028
`Patent 6,404,480 B2
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`SEL has not met its burden to show that the additional discovery is
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`necessary in the interest of justice.
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`CONCLUSION
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`For the reasons discussed above, we conclude that SEL has not met its
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`burden to show that the additional discovery is necessary in the interest of
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`justice.
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`It is
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`ORDER
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`ORDERED that SEL’s motion for additional discovery is denied.
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`6
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`Case IPR2013-00028
`Patent 6,404,480 B2
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`
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`PETITIONER:
`
`Scott McKeown
`Gregory S. Cordrey
`OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketmckeown@oblon.com
`gcordrey@jmbm.com
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`PATENT OWNER:
`
`Eric J. Robinson
`Sean C. Flood
`ROBINSON INTELLECTUAL PROPERTY LAW OFFICE, P.C.
`erobinson@riplo.com
`sflood@riplo.com
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`Stanley A. Schlitter
`Douglas R. Peterson
`Steptoe & Johnson, LLP
`sschlitt@steptoe.com
`dpeterson@steptoe.com
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`7
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