throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`IPR2014-00717 Paper 6
`IPR2014-00735 Paper 8
`Entered July 10, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC; and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00717
`Patent 6,108,686
`Case IPR2014-00735
`Patent 6,618,593 B11
` ____________
`
`
`Before BRIAN J. McNAMARA, DAVID C. McKONE, STACEY G. WHITE,
`PETER P. CHEN, FRANCES L. IPPOLITO, TINA A. HULSE, Administrative
`Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER CONCERNING PATENT OWNER’S UNAUTHORIZED
`SUBSTANTIVE E-MAIL
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses issues that are identical in related cases. Therefore, we
`exercise our discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this style heading in any subsequent papers.
`
`

`

`Case No. IPR2014-00717; IPR2014-00735
`Patent No. 6,108,686; 6,618,593 B1
`
`
`This paper concerns the impropriety of e-mail correspondence received by
`
`the Board from Andrew Crain, counsel for Black Hills Media, Inc. (“Patent
`
`Owner”) on July 9, 2014. The subject line of the e-mail identifies it as “Inquiry
`
`Following June 30 Conference re: IPR2014-00717 & 735.” As discussed further
`
`below, Mr. Crain’s e-mail is inappropriate. Any further such unauthorized
`
`correspondence with the Board will likely result in sanctions against Mr. Crain and
`
`Patent Owner.
`
`On June 25, 2014, the Board received e-mail correspondence from Vivek
`
`Ganti, counsel for Patent Owner, requesting a teleconference to discuss additional
`
`discovery concerning whether Samsung Electronics Co., Ltd.; Samsung
`
`Electronics America, Inc.; and Samsung Telecommunications America, LLC
`
`(collectively, “Petitioner”) should have identified Google, Inc., as a real party in
`
`interest in this proceeding. Patent Owner requested that we conduct the call on
`
`either June 27, 2014, or June 30, 2014.
`
`During a teleconference on June 30, 2014, Andrew Crain, counsel for Patent
`
`Owner, argued that a recently discovered mobile application distribution
`
`agreement constitutes circumstantial evidence that Google, Inc., is a real party in
`
`interest in this proceeding. After hearing arguments from both Patent Owner and
`
`Petitioner, we advised the parties that the panel would consider the matter and that
`
`we would notify them in due course whether Patent Owner would be authorized to
`
`file a motion for additional discovery. During the teleconference, we did not
`
`authorize Patent Owner to file such a motion. We do not address Patent Owner’s
`
`request for authorization to file such a motion in this paper.
`
`Patent Owner’s July 9, 2014, e-mail correspondence, addressed to “Dear
`
`PTAB Staff” and signed by Mr. Crain, reiterates arguments Mr. Crain made to the
`
`panel during the June 30, 2014 teleconference and includes as an attachment the
`
`
`
`2
`
`

`

`Case No. IPR2014-00717; IPR2014-00735
`Patent No. 6,108,686; 6,618,593 B1
`
`alleged mobile application distribution agreement. This e-mail, for all practical
`
`purposes, constitutes an unauthorized, off-the-record brief in support of Patent
`
`Owner’s request for additional discovery.
`
`The submission of such unauthorized correspondence raises several issues.
`
`For example, the Board must respond to such unauthorized correspondence,
`
`distracting us from our mission to secure the just, speedy, and inexpensive
`
`resolution of every proceeding. See 37 C.F.R. §42.1 (b). In addition, the opposing
`
`party has no formal manner of response. Patent Owner’s argument, presented in
`
`the form of an off-the-record e-mail, prejudices Petitioner, who has no mechanism
`
`to oppose on the record, and whose only alternative is to oppose by sending its
`
`own unauthorized off-the-record e-mail. We do not conduct off-the-record
`
`proceedings, and for this reason alone, the content of Mr. Crain’s e-mail will not be
`
`considered.
`
`Finally, such correspondence circumvents our rules prohibiting the filing of
`
`a motion without prior authorization. See 37 C.F.R. § 42.20(b). In this case,
`
`Mr. Crain participated in the June 30, 2014, conference call and was aware that we
`
`did not authorize the filing of a motion for additional discovery. The subsequent
`
`submission of arguments and documents supporting such a motion via e-mail is
`
`unacceptable.
`
`As it was unauthorized, we will not consider any of the content in
`
`Mr. Crain’s July 9, 2014 e-mail on behalf of the Patent Owner. Because we do not
`
`consider the content of the e-mail, we also do not authorize Petitioner to respond to
`
`it.
`
`Finally, we remind the parties that any further such conduct will likely result
`
`in the imposition of sanctions against counsel and the party.
`
`In consideration of the above, it is:
`
`
`
`3
`
`

`

`Case No. IPR2014-00717; IPR2014-00735
`Patent No. 6,108,686; 6,618,593 B1
`
`
`ORDERED that the July 9, 2014, e-mail from Mr. Crain will not be
`
`considered by the Board;
`
`FURTHER ORDERED that Petitioner is not authorized to respond to
`
`Mr. Crain’s July 9, 2014, e-mail; and
`
`FURTHER ORDERED that, except as otherwise authorized in the Rules of
`
`Practice in Patent Cases, 37 C.F.R. § 42 et. seq., no motions or other substantive
`
`correspondence may be filed in this proceeding without prior, express
`
`authorization.
`
`
`
`
`
`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
`
`
`4
`
`

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