`571-272-7822
`
`
`Paper 8
`Date Entered: August 7, 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
`___________
`
`
`Before BRIAN J. McNAMARA, DAVID C. McKONE, FRANCES L. IPPOLITO,
`Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`AUTHORIZATION FOR PATENT OWNER TO FILE MOTION FOR
`ADDITIONAL DISCOVERY
`37 C.F.R. § 42.51
`
`
`
`IPR2014-00717
`Patent 6,108,686
`
`
` On June 25, 2014, the Board received e-mail correspondence from Vivek
`Ganti, counsel for Black Hills Media LLC (“Patent Owner”), requesting a
`teleconference to discuss authorization to file a motion for additional discovery
`concerning whether Samsung Electronics Co., Ltd.; Samsung Electronics America,
`Inc.; and Samsung Telecommunications America, LLC (collectively, “Petitioner”)
`should have identified Google, Inc. (“Google”), as a real party in interest in
`IPR2014-00717 and IPR2014-00735 (“the subject proceedings”). During a
`teleconference on June 30, 2014, Andrew Crain, counsel for Patent Owner, argued
`that a recently discovered mobile application distribution agreement (MADA)
`between Google and at least one of the Petitioner entities constitutes circumstantial
`evidence that Google, Inc., is a real party-in-interest in the subject proceedings.
`According to Patent Owner, the MADA contains provisions in which Google
`indemnifies Samsung and in which Google maintains full control of related
`litigation. In its Mandatory Disclosures (IPR2014-00717, Paper 5, and IPR2014-
`00735, Paper 7), Patent Owner has identified a lawsuit involving one of the
`Petitioner entities, i.e., Black Hills Media, LLC v. Samsung Elecs. Co., Ltd., et al.,
`No. 2:13-cv-00379 (E.D. Tex.).
`During the conference, counsel for Petitioner responded that the MADA
`applies to claims resulting from allegations against Samsung products and is not
`related to actions, such as inter partes reviews, in the United States Patent and
`Trademark Office. Counsel for Petitioner also stated that Google has not exercised
`control over the petitions in the subject proceedings.
`A party that funds or directly controls an IPR or PGR petition or proceeding
`constitutes a real party-in-interest. See Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,760 (Aug. 14, 2012). In view of the existence of this lawsuit and
`the alleged indemnification requirement in the MADA, Patent Owner argues that it
`
`
`
`2
`
`
`
`IPR2014-00717
`Patent 6,108,686
`
`should be permitted to discover information concerning the scope of Google’s
`involvement in the subject proceedings.
`In view of the circumstances, we authorize Patent Owner to file a Motion for
`Additional Discovery. Patent Owner’s Motion for Additional Discovery may not
`exceed ten pages of argument and must be filed by August 22, 2014. Patent
`Owner’s Motion for Additional Discovery should explain why granting the motion
`is in the interest of justice. See 37 C.F.R. § 42. 51(b)(2)(i). Patent Owner’s
`Motion for Additional Discovery should identify with particularity the specific
`discovery being sought and should address each of the Garmin factors. See
`Garmin International, Inc. et. al. v. Cuozzo Speed Technologies LLC, IPR2012-
`00001, Paper 26 (PTAB Mar. 5, 2013). In particular, Petitioner’s Motion for
`Additional Discovery should explain what evidence Petitioner has, tending to show
`beyond speculation that something useful will be discovered (including, but not
`limited to, the MADA), how Patent Owner’s discovery requests are tailored to
`produce specific information that is not otherwise available concerning Google’s
`involvement in the subject proceedings, and why the discovery being sought is not
`unduly burdensome on Petitioner.
`Petitioner may a file an Opposition to Patent Owner’s Motion for Additional
`Discovery. Petitioner’s Opposition may not exceed ten pages of argument and
`must be filed by September 5, 2014. We do not authorize Patent Owner to file a
`Reply to Petitioner’s Opposition.
`In consideration of the above, it is,
`ORDERED that Patent Owner is authorized to file a Motion for Additional
`Discovery, not exceeding 10 pages of argument, by August 22, 2014;
`
`
`
`3
`
`
`
`IPR2014-00717
`Patent 6,108,686
`
`
`FURTHER ORDERED that Petitioner is authorized to a file an Opposition
`to Patent Owner’s Motion for Additional Discovery, not exceeding 10 pages of
`argument, by September 5, 2014; and
`FURTHER ORDERED that no reply to Petitioner’s Opposition is
`authorized.
`
`
`
`PETITIONER
`Andrea G. Reister
`Gregory S. Discher
`COVINGTON & BURLING LLP
`areister@cov.com
`gdischer@cov.com
`
`PATENT OWNER
`
`N. Andrew Crain
`Vivek Ganti
`THOMAS | HORSTEMEYER, LLP
`andrew.crain@thomashorstemeyer.com
`vivek.ganti@thomashorstemeyer.com
`
`
`
`
`
`4
`
`
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