Trials@uspto.gov Paper 31
` Tel: 571-272-7822 Entered: January 22, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00717
`Patent 6,108,686
`____________
`
`
`Before BRIAN J. McNAMARA, DAVID C. McKONE,
`and FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`ORDER GRANTING MOTION TO COMPEL DEPOSITION OF
`SUNGIL CHO
`Conduct of the Proceeding
`37C.F.R. § 42.51(b)(1)
`
`
`
` Tel: 571-272-7822 Entered: January 22, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00717
`Patent 6,108,686
`____________
`
`
`Before BRIAN J. McNAMARA, DAVID C. McKONE,
`and FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`ORDER GRANTING MOTION TO COMPEL DEPOSITION OF
`SUNGIL CHO
`Conduct of the Proceeding
`37C.F.R. § 42.51(b)(1)
`
`
`
`
`Case IPR2014-00717
`Patent 6,108,686
`
`
`On August 28, 2014, Black Hills Media, LLC (“Patent Owner”) filed
`
`a substitute motion for additional discovery, Paper 15, as authorized in our
`
`orders of August 7, 2014, and August 27, 2014. Papers 8, 11. On
`
`September 8, 2014, Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., and Samsung Telecommunications America (collectively
`
`“Petitioner”) filed its opposition to Patent Owner’s substitute motion for
`
`additional discovery.1 Paper 16. Petitioner attached to its opposition to
`
`Patent Owner’s motion for additional discovery the declaration of
`
`Mr. Sungil Cho. Ex. 1009 (“Cho Decl.”).
`
`On October 2, 2014, we granted-in-part Patent Owner’s motion for
`
`additional discovery, requiring that Petitioner answer certain interrogatories
`
`and produce certain documents concerning whether any other party, in
`
`particular Google, Inc. (“Google”), is a real party in interest in this
`
`proceeding. Paper 17 (“Order Authorizing Additional Discovery”).
`
`Petitioner answered the interrogatories and document requests, stating that
`
`neither Google, nor Google’s counsel, directed Petitioner to provide a copy
`
`of one or more drafts of the Petition to any person or entity, that there was
`
`no involvement by any individual not employed by Petitioner or Petitioner’s
`
`counsel of record in filing the Petition, and that there were no payments or
`
`other financial transactions agreed upon or made to Petitioner or Petitioner’s
`
`counsel of record in relation to the indemnification provisions of a Master
`
`Application Development Agreement (“MADA”) between Petitioner and
`
`Google. Ex. 2012. In addition, Petitioner indicated that there were no
`
`
`1 On January 9, 2015, Petitioner filed a Supplemental Mandatory Notice,
`Paper 30, advising us that Samsung Electronics America, Inc., has merged
`with Samsung Telecommunications America, LLC, and that the combined
`entity is a wholly-owned subsidiary of Samsung Electronics Co., Ltd.
`
`
`
`2
`
`
`
`Case IPR2014-00717
`Patent 6,108,686
`
`documents responsive to Requests for Production authorized by the panel.
`
`Id.
`
`Patent Owner represents that Petitioner has refused Patent Owner’s
`
`request to produce Mr. Cho for cross-examination and, as authorized in our
`
`order of November 26, 2014 (Paper 20), moves to compel Mr. Cho’s
`
`deposition as a matter of routine discovery under 37 C.F.R. §42.51(b)(1)(ii).
`
`Paper 21 (Motion to Compel the Cross Examination of Sungil Cho (“Mot. to
`
`Compel”)). Patent Owner opposes Petitioner's Mot. to Compel. Paper 24
`
`(“Opp. to Mot. to Compel”).
`
`In his declaration, Mr. Cho, who we understand is a member of the
`
`bar of the State of New York, Ex. 2011, testified that he is employed by
`
`Petitioner Samsung Electronics Co., Ltd., as a Director and is responsible for
`
`coordinating and supervising the preparation, review and filing of IPR2014-
`
`00717 and IPR2014-00735 (the “Subject Petitions”). Cho Decl. ¶ 2.
`
`Mr. Cho testified that he had knowledge of the individuals who received
`
`drafts of the Petitions and of the individuals who were involved in the
`
`preparation, review, and filing of the Petitions. Id. at ¶ 4. Mr. Cho also
`
`testified that he directs the activities of the law firm of Covington & Burling
`
`(Covington) concerning the preparation of the Subject Petitions. Id. at ¶¶ 2,
`
`4. Mr. Cho further testified that Petitioner had paid and is paying all fees
`
`with respect to the preparation, review and filing of the Subject Petitions.
`
`Id. at ¶ 8.
`
`Patent Owner argues that in view of Mr. Cho’s direct testimony, it is
`
`unreasonable for Petitioner to argue that Patent Owner should not be able to
`
`cross-examine Mr. Cho. According to Patent Owner, there are
`
`inconsistencies between the testimony in Mr. Cho’s declaration and the
`
`
`
`3
`
`
`
`Case IPR2014-00717
`Patent 6,108,686
`
`answers to the interrogatories. Mot. to Compel 4–5. Petitioner contends
`
`that, when viewed in its entirety, the Cho Declaration makes clear that there
`
`is no contradiction or discrepancy with Petitioner’s responses to the
`
`additional discovery we ordered. Opp. to Mot. to Compel. 2. We express no
`
`opinion on either party’s position, as this is a matter on which discovery is
`
`not complete. In any case, the testimony in Mr. Cho’s declaration indicates
`
`that he has highly pertinent knowledge of facts that may be important to
`
`determining whether Petitioner has identified all real parties in interest or
`
`privies.
`
`Petitioner argues that routine discovery does not mandate Mr. Cho’s
`
`deposition because we fully considered Mr. Cho’s Declaration when
`
`granting Patent Owner’s Motion for Additional Discovery. Opp. to Mot. to
`
`Compel. 3–4. Although our Order Authorizing Additional Discovery
`
`expressed uncertainty as to whether Mr. Cho would be available for cross-
`
`examination, we noted that “Patent Owner is also entitled to corroboration of
`
`the assertions in Mr. Cho’s declaration and to cross-examine Mr. Cho.” Id.
`
`In response to a subsequent inquiry, we noted that our Order Authorizing
`
`Additional Discovery did not authorize Mr. Cho’s deposition as additional
`
`discovery. However, Petitioner having proffered Mr. Cho’s declaration
`
`testimony, we see no reason why Patent Owner should not be permitted to
`
`cross-examine Mr. Cho as a matter of routine discovery. 37 C.F.R.
`
`§42.51(b)(ii).
`
`Patent Owner notes that during a conference call Petitioner stated that
`
`it would no longer rely on Mr. Cho’s declaration and even offered to
`
`withdraw Mr. Cho’s declaration. Mot. to Compel 4. Patent Owner contends
`
`that Petitioner should not be able to withdraw Mr. Cho’s testimony at this
`
`
`
`4
`
`
`
`Case IPR2014-00717
`Patent 6,108,686
`
`point in the proceedings. Id. As discussed above, the panel considered
`
`Mr. Cho’s statements in determining the scope of additional discovery and
`
`they may not be withdrawn for the purpose of discovering information
`
`concerning real parties in interest.
`
`We are cognizant, however, of the limited scope of Mr. Cho’s
`
`declaration and the corresponding limited scope of permissible cross-
`
`examination. As we advised the parties during a conference call, we will not
`
`permit Mr. Cho’s deposition to turn into a “fishing expedition” on other
`
`issues. Thus, while we order Petitioner to produce Mr. Cho for deposition,
`
`we remind the parties that the scope of the deposition is limited to the
`
`subject matter in Mr. Cho’s declaration, and limit the deposition to no more
`
`than three hours of cross-examination and 45 minutes of redirect.
`
`Mr. Cho’s declaration does not identify his country of residence.
`
`We are advised that Mr. Cho physically resides in Korea. Ex. 2009 (“Initial
`
`Conf. Tr.”) 23–24. As discussed above, we also understand that Mr. Cho is
`
`a member of the bar of the state of New York. Patent Owner has indicated
`
`its willingness to cooperate with Petitioner in arranging to conduct the cross-
`
`examination of Mr. Cho at a time and place when Mr. Cho will be in the
`
`United States. Id. at 33. Patent Owner has also agreed to conduct the cross-
`
`examination by telephone or video link. Id. We direct the parties to consult
`
`with each other to make appropriate arrangements for Mr. Cho’s deposition.
`
`In consideration of the above, it is
`
`ORDERED that Petitioner produce Mr. Cho for up to three hours of
`
`cross-examination by Patent Owner, and that the redirect of Mr. Cho be
`
`limited to 45 minutes of testimony; and
`
`
`
`5
`
`
`
`Case IPR2014-00717
`Patent 6,108,686
`
`
`FURTHER ORDERED that the parties meet and confer to make
`
`appropriate arrangements for conducting Mr. Cho’s deposition at a time and
`
`place in the United States or by video or telephonic means.
`
`
`
`
`
`PETITIONER:
`
`Andrea Reister
`areister@cov.com
`
`Gregory Discher
`gdischer@cov.com
`
`PATENT OWNER
`
`Andrew Crain
`Andrew.crain@thomashorstemeyer.com
`
`Vivek Ganti
`Vivek.ganti@thomashorstemeyer.com
`
`Robert Gravois
`Robert.gravois@thomashorstemeyer.com
`
`Kenneth Knox
`Kenny.knox@thomashorstemeyer.com
`
`
`
`
`
`6
`
`
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