`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Facebook, Inc.
`Petitioner
`
`v.
`
`TLI Communications LLC
`Patent Owner
`
`U.S. Patent No. 6,038,295
`Filing Date: June 17, 1997
`Issue Date: March 14, 2000
`
`Title: APPARATUS AND METHOD FOR RECORDING, COMMUNICATING
`AND ADMINISTERING DIGITAL IMAGES
`
`
`STATEMENT AFFIRMING COMPLIANCE
`WITH 37 C.F.R. § 42.51(b)(1)
`
`
`Inter Partes Review No. 2014‐00566
`
`
`
`
`
`
`
`
`Statement Affirming Compliance
`with 37 C.F.R. § 42.51(b)(1)
`
`
`Pursuant to the Board’s June 23, 2014 Order (Paper No. 11), Petitioner
`
`Facebook,
`
`Inc.
`
`(“Petitioner”) submits the
`
`following statement affirming
`
`compliance with 37 C.F.R. § 42.51(b)(1) (“routine discovery”):
`
`Petitioner affirms compliance with 37 C.F.R. § 42.51(b)(1).
`
`Patent Owner TLI Communications LLC (“Patent Owner”) requested
`
`documents from Summit 6 LLC v. Facebook, Inc. et al., No. 3:11‐cv‐00367‐O (N.D.
`
`Tex.) (“Summit 6 litigation”) that refer to the ’295 patent that is the subject of this
`
`IPR. Patent Owner claimed those documents qualify as “routine discovery” under
`
`37 C.F.R. § 42.51 based on Patent Owner’s unsupported speculation that they
`
`might contain statements about the ’295 patent inconsistent with positions taken
`
`by Petitioner in this proceeding.
`
`Petitioner’s investigation has uncovered no statements from the Summit 6
`
`litigation that are inconsistent with any positions it has taken in this proceeding.
`
`Petitioner maintains that Patent Owner is not entitled to any of the requested
`
`documents, as “routine discovery” or otherwise. The Board indicated during the
`
`June 20, 2014 teleconference its desire to not have this issue devolve into a
`
`“sideshow.” The interests of justice are not served by consuming any more of the
`
`Board’s time with an issue that is, at most, an irrelevant distraction from the
`
`merits of the underlying IPR petition. Accordingly, to avoid burdening the Board,
`
`
`
`1
`
`
`
`Statement Affirming Compliance
`with 37 C.F.R. § 42.51(b)(1)
`
`Petitioner has voluntarily produced the requested documents to Patent Owner,
`
`although they are irrelevant to any issue in these proceedings, redacted to
`
`remove information unrelated to the ’295 patent.
`
`
`
`Petitioner again affirms compliance with 37 C.F.R. § 42.51(b)(1).
`
`
`
`Dated: June 27, 2014
`
`COOLEY LLP
` ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843‐5001
`Fax: (650) 849‐7400
`
`
`
`
`
`
`By:
`
`
`
`
`Respectfully submitted,
`
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
`Facebook, Inc.
`
`
`
`2
`
`
`
`Statement Affirming Compliance
`with 37 C.F.R. § 42.51(b)(1)
`
`
`CERTIFICATE OF SERVICE
`
` I
`
` hereby certify, pursuant to 37 C.F.R. Sections 42.6, that the attached Statement
`Affirming Compliance with 37 C.F.R. § 42.51(b)(1) is being served via email on the
`27th day of June, 2014, the same day as the filing of the above‐identified
`document in the United States Patent and Trademark Office/Patent Trial and
`Appeal Board, upon the following counsel of record in IPR2014‐00566:
`
`Tarek N. Fahmi (Reg. No. 41,402)
`ASCENDA LAW GROUP, PC
`84 W. Santa Clara St., Suite 550
`San Jose, CA 95113
`Phone: 866‐877‐4883
`Email: tarek.fahmi@ascendalaw.com, patents@ascendalaw.com
`
`Robert A. Whitman (Reg. No. 36,966)
`MISHCON DE REYA NEW YORK LLP
`750 7th Avenue, 26th Floor
`New York, NY 10019
`Phone: 212‐257‐4455
`Email: robert.whitman@mishcon.com
`
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`COOLEY LLP
`ATTN: Heidi L. Keefe
`Patent Docketing
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, D.C. 20004
`Tel: (650) 843‐5001
`Fax: (650) 849‐7400
`
`
`
`
`1
`
`
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