`
`Filed on behalf of: Black Hills Media, LLC
`By: Andrew Crain (andrew.crain@thomashorstemeyer.com)
`
`THOMAS | HORSTEMEYER, LLP
`
`400 Interstate North Parkway, SE, Suite 1500
`Atlanta, Georgia 30339
`Tel: (770) 933-9500
`Fax: (770) 951-0933
`
`
`
`
`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
`
`U.S. Patent 6,108,686
`
`---------------
`
`SUBSTITUTE MOTION FOR ADDITIONAL DISCOVERY BY PATENT
`OWNER*
`
`
`
` This Substitute Motion is submitted to correct and clarify Footnote No. 2.
`
` *
`
`
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`
`TABLE OF CONTENTS
`
`BACKGROUND ............................................................................................ 1
`
`I.
`
`II. ADDITIONAL DISCOVERY CONCERNING THE IDENTITY OF
`ALL REAL PARTIES IN INTEREST IS NECESSARY IN THE
`INTEREST OF JUSTICE ............................................................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Patent Owner Is in Possession of Evidence that Shows Beyond
`Speculation that Something Useful Will Be Uncovered (Garmin
`Factor 1) ............................................................................................... 1
`
`Patent Owner’s Discovery Requests Do Not Seek Petitioner’s
`Litigation Positions or the Underlying Basis for Those Positions
`(Garmin Factor 2) ................................................................................. 8
`
`Patent Owner Cannot Generate Equivalent Information by Other
`Means (Garmin Factor 3) ..................................................................... 8
`
`Patent Owner’s Instructions Are Easily Understandable (Garmin
`Factor 4) ............................................................................................... 9
`
`Patent Owner’s Requests Are Not Overly Burdensome (Garmin
`Factor 5) ............................................................................................... 9
`
`III. CONCLUSION ............................................................................................ 10
`
`
`
`i
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`
`TABLE OF AUTHORITIES
`
`CASES
`Arris Group, Inc. v. C-Cation Tech., LLC, IPR2014-00746, Paper 15 (PTAB July
`24, 2014) .................................................................................................................... 5
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper
`40, (PTAB April 23, 2014) ........................................................................................ 5
`Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, (PTAB
`March 5, 2013) .................................................................................................. 1, 8, 9
`
`STATUTES AND RULES
`35 U.S.C. § 312 .......................................................................................................... 4
`35 U.S.C. § 315 .......................................................................................................... 7
`35 U.S.C. § 316 .......................................................................................................... 1
`
`OTHER AUTHORITIES
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) .. 4, 6, 7, 10
`
`
`
`
`
`
`
`
`ii
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`
`
`
`EXHIBIT LIST
`
`EXHIBIT NO.
`
`EXHIBIT DESCRIPTION
`
`BHM Ex. 2001
`
`Proposed Discovery Request
`
`BHM Ex. 2002
`
`Mobile Application Distribution Agreement
`
`BHM Ex. 2003
`
`BHM Ex. 2004
`
`BHM Ex. 2005
`
`BHM Ex. 2006
`
`Complaint in Black Hills Media, LLC v. Samsung
`Elecs. Co., Ltd., et al., No. 2:13-cv-00379 (E.D. Tex.).
`
`Claim Charts Illustrating Infringement of U.S. Patent
`6,108,686 in Black Hills Media, LLC v. Samsung
`Elecs. Co., Ltd., et al., No. 2:13-cv-00379 (E.D. Tex.),
`served on August 22, 2013 (hereinafter “’686
`Infringement Claim Charts”).
`
`Transcript of Proceedings before the Hon. Lucy H.
`Koh for Apple, Inc. v. Samsung Elecs. Co., Ltd., No.
`12-cv-00630 (N.D. Ca. June 18, 2014), ECF No.
`1926. (hereinafter “Apple v. Samsung Tr.”)
`
`Transcript of Deposition of Justin Denison (Plaintiff’s
`Exhibit No. 3001) for Apple, Inc. v. Samsung Elecs.
`Co., Ltd., No. 12-cv-00630 (N.D. Ca. June 16, 2014),
`ECF No. 1920 (hereinafter “Denison Dep. Tr.”).
`
`BHM Ex. 2007
`
`Select Internet Web Pages from en.wikipedia.org.
`
`BHM Ex. 2008
`
`Select Internet Web Pages from samsung.com
`
`iii
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`
`BACKGROUND
`
`I.
`On August 7, 2014, the Board authorized Patent Owner’s prior request to
`
`file a Motion for Additional Discovery. Paper 8, p. 3. As shown below, the
`
`discovery sought is necessary in the interest of justice, and the Board should grant
`
`the requested additional discovery that is set out in Ex. 2001.
`
`II. ADDITIONAL DISCOVERY CONCERNING THE IDENTITY
`OF ALL REAL PARTIES IN INTEREST IS NECESSARY IN
`THE INTEREST OF JUSTICE
`
`
`
`A party is entitled to additional discovery under 37 C.F.R. § 42.51(a)(2) if
`
`the party shows that such additional discovery is “in the interest of justice.” 35
`
`U.S.C. § 316(a)(5). Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-
`
`00001, Paper 26, pp. 6-7 (PTAB March 5, 2013) set forth five factors to be
`
`considered when determining if a party has satisfied the “necessary in the interest
`
`of justice” standard under 35 U.S.C. § 316(a)(5). Each factor is addressed below.
`
`A.
`
`Patent Owner Is in Possession of Evidence that Shows
`Beyond Speculation
`that Something Useful Will Be
`Uncovered (Garmin Factor 1)
`The first Garmin factor asks whether the party requesting discovery is “in
`
`possession of evidence tending to show beyond speculation that in fact something
`
`useful will be uncovered.” Garmin Int’l, IPR2012-00001, Paper 26 at p. 6. In the
`
`context of the first Garmin factor, “useful” means “favorable in substantive value
`
`to a contention of the party moving for discovery.” Id. at p. 7.
`
`1
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`Patent Owner is in possession of information that demonstrates beyond
`
`speculation that information exposing Google as being a real party-in-interest will
`
`be discovered. Patent Owner is in possession of a Mobile Application Distribution
`
`Agreement (hereinafter “the MADA”) between Google and Petitioner that sets
`
`forth an indemnification provision stating that Google will defend Petitioner
`
`against any third party claim “based upon or otherwise arising out of . . . any claim
`
`that . . . Google Applications . . . infringe any Intellectual Property Right.” Ex.
`
`2002 (the MADA) at § 11. Section 11 of the MADA (hereinafter “the
`
`Indemnification Provision) recites that Google, if notified of an indemnification
`
`claim covered by the MADA, has “full control and authority over the defense” as
`
`part of its obligations to indemnify Petitioner. Id. at § 11.3 (emphasis added).
`
`Patent Owner has asserted U.S. Patent No. 6,108,686 (hereinafter “the ’686
`
`Patent”), which is at issue in this IPR, against Petitioner before the U.S. District
`
`Court for the Eastern District of Texas (“the Texas Action”) with respect to devices
`
`sold by Petitioner that include Google Applications covered by the MADA (see
`
`Ex. 2002 at § 1.12) during the effective period of the MADA. See Ex. 2003,
`
`Complaint alleging patent infringement of the ’686 patent (“TXED Complaint”).
`
`In this litigation, Patent Owner served infringement contentions on August 22,
`
`2013 that include Google products and/or applications as part of the accused
`
`device in conjunction with Petitioner. See Ex. 2004, Texas Action, ’686
`
`2
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`Infringement Claim Charts, pp. 9, 14-16, 22, 26-28, 35, 39-41, 59, 72, 85. The
`
`TXED Complaint and the ‘686 infringement contentions raise patent claims
`
`against Petitioner, which collectively enable Petitioner
`
`to
`
`invoke
`
`the
`
`Indemnification Provision of the MADA, as the Complaint identifies products
`
`made and/or sold by Petitioner between the execution date (Jan. 1, 2011) and the
`
`termination date (Dec. 31, 2012) of the MADA1, which included Google products
`
`thereon2. The patent infringement action remains pending in the Texas Action,
`
`although the case is currently stayed.
`
`Petitioner has previously invoked the Indemnification Provision of this very
`
`MADA in Ex. 2002 for a claim of patent infringement, thus establishing its
`
`applicability to claims of patent infringement involving Google Applications.
`
`Specifically, in patent litigation between Apple, Inc. and Petitioner, Petitioner first
`
`
` 1
`
` The TXED Complaint identifies the Samsung Galaxy SIII & Tab II as exemplary
`
`infringing products of the ’686 patent. Ex. 2003, at ¶109. According to Wikipedia,
`
`Petitioner introduced the Galaxy SIII on May 3, 2012 and the Galaxy Tab 2 on
`
`May 13, 2012. See Ex. 2007, Internet Web pages from en.wikipedia.org.
`
`2 Ex. 2004 identifies Google Play Music, which is a component of Google Play
`
`(formerly “Android Market”). See Ex. 2002, § 1.12; Ex. 2004 at the page
`
`“EXHIBIT 9 PAGE 8”; & http://en.wikipedia.org/wiki/Google_Play.
`
`3
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`denied that it was seeking indemnification from another party, but Google later
`
`revealed that Google had indeed been indemnifying Petitioner against patent
`
`infringement claims pursuant to the Indemnification Provision. See Ex. 2005
`
`(Apple v. Samsung Tr.) at p. 165, ll. 22-25; see also, Ex. 2006 (Denison Dep. Tr.)
`
`at pp. 13-14. Just as Google assumed “full control and authority over the defense”
`
`in the Apple litigation, the MADA and the underlying claims of patent
`
`infringement in the TXED Complaint make it highly likely that Google has done
`
`so here.
`
`The additional discovery that Patent Owner requests is “useful” in the
`
`context of the first Garmin factor because it will resolve the dispositive issue of
`
`whether the Petition should even be considered by the Board. See 35 U.S.C. §
`
`312(a) (“A petition . . . may be considered only if . . . the petition identifies all real
`
`parties in interest” (emphasis added).). If Google should have been included as a
`
`real party-in-interest, then Patent Owner contemplates seeking authorization to
`
`move to terminate this proceeding according to § 312(a).
`
`
`
`The Proposed Discovery Requests (Ex. 2001) are narrowly tailored and
`
`intended to obtain information on only the issue of whether Google is a party that
`
`desires review of the patent. See Office Patent Trial Practice Guide (“OPTPG”),
`
`77 Fed. Reg. 48756, 48760 (Aug. 14, 2012). Additionally, the Board has
`
`historically concluded that the existence of an indemnification provision weighs in
`
`4
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`favor of granting additional discovery for the purpose of identifying real parties in
`
`interest. See, e.g., Arris Group, Inc. v. C-Cation Tech., LLC, IPR2014-00746,
`
`Paper 15, p. 4 (PTAB July 24, 2014); see also, Atlanta Gas Light Co. v. Bennett
`
`Regulator Guards, Inc., IPR2013-00453, Paper 40, p. 6 (PTAB April 23, 2014).
`
`Thus, Request for Production No. 1 is limited to MADA documents
`
`executed subsequent to the MADA in Ex. 2002 that necessarily have to exist from
`
`the fact that Samsung continues to offer and sell devices containing the same
`
`Google Applications both referenced in the MADA of Ex. 2002 and in Ex. 2008,
`
`which is a copy of Samsung’s web site for its Galaxy S5, which identifies many of
`
`the same Google Applications contained in infringement contentions on the ’686
`
`patent in the underlying TXED Complaint.
`
`
`
`Because it is established that: (a) the MADA (Ex. 2002) is an operative
`
`agreement, (b) Samsung has previously invoked the MADA in response to other
`
`patent infringement claims (i.e., the Apple litigation) by making an indemnification
`
`claim pursuant to § 11 of the MADA, (c) Samsung has received a response from
`
`Google in response thereto (i.e., in the Apple litigation), and (d) the TXED
`
`Complaint and infringement contentions contain claims of patent infringement
`
`against Petitioner regarding the ’686 patent, documents responsive to Request for
`
`Production Nos. 2 and 3 would be useful to establish that Petitioner has similarly
`
`invoked the Indemnification Provision with respect to the ’686 patent and that
`
`5
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`Google has acknowledged its indemnification obligations under the MADA, which
`
`include “full direction and control” of defending Petitioner against claims of
`
`infringement on the ’686 patent.
`
`Interrogatory No. 1 is restricted to the identity and affiliation of each
`
`individual who was provided a copy of one or more drafts of the petition for this
`
`IPR prior to its filing on or about May 1, 2014. This interrogatory relates to those
`
`who had direction or control over the IPR petition. See OPTPG, § I(D)(1).
`
`Similarly, Interrogatory No. 2 explicitly tracks the Office Patent Trial Practice
`
`Guide to seek only a description of the “nature and/or degree of involvement” by
`
`any non-employees of Petitioner and/or Petitioner’s counsel-of-record in the
`
`petition. See OPTPG, § I(D)(1). The OPTPG describes “nature and/or degree of
`
`involvement in the filing” of a petition as one of the “[r]elevant factors.” Finally,
`
`Interrogatory No. 3 is also directly based on the OPTPG and is focused on the
`
`issue of funding of the IPR petition and/or proceeding. See id. (“[A] party that
`
`funds and directs and controls an IPR or PGR petition or proceeding constitutes a
`
`‘real party-in-interest….’”) (emphasis added).
`
`An individual associated with Google being provided a draft of the IPR
`
`petition prior to the filing of the petition would be further evidence that Google has
`
`control over Petitioner’s role in this proceeding, especially if the “nature and/or
`
`degree” of that person’s involvement also evidenced direction and/or control of the
`
`6
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`IPR petition. Since any attempt by Petitioner to file a subsequent IPR petition on
`
`the ’686 patent in compliance with § 312(a) would be futile, as it would be barred
`
`by 35 U.S.C. § 315(b), the information sought in these interrogatories is, like the
`
`document requests, “useful” in the context of the first Garmin factor.
`
`While Petitioner may contend that Patent Owner has not established that
`
`Petitioner has made such an indemnification claim pursuant to the MADA, that is
`
`not the standard, since it would be unfair to penalize Patent Owner for what it
`
`cannot possibly know as a direct result of Petitioner’s efforts to maintain
`
`information as confidential. For example, the fact that Petitioner has invoked this
`
`very MADA with Google before in response to patent infringement allegations
`
`certainly indicates that Petitioner would be similarly motivated to do so again
`
`rather than shouldering expenses and any potential awarded damages, especially
`
`when Petitioner does not have to under the MADA. Instead, the interests of justice
`
`weigh in favor of insuring that all real parties-in-interest are appropriately named
`
`so as to achieve the stated goals of identifying potential conflicts, assuring proper
`
`application of the statutory estoppel provisions, and protecting the integrity of both
`
`the USPTO and Federal Courts by assuring that all issues are promptly raised and
`
`vetted. See OPTPG, § I(D)(1).
`
`7
`
`
`
`B.
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`Patent Owner’s Discovery Requests Do Not Seek
`Petitioner’s Litigation Positions or the Underlying Basis for
`Those Positions (Garmin Factor 2)
`The second Garmin factor asks whether the moving party is “[a]sking for the
`
`other party’s litigation positions and the underlying basis for those positions.”
`
`Garmin Int’l, IPR2012-00001, Paper 26 at p. 6. Patent Owner is not seeking any
`
`information indicative of Petitioner’s litigation positions or the underlying basis for
`
`those positions. Instead, Patent Owner seeks limited discovery concerning whether
`
`Google is a real party-in-interest that should have been identified in the Petition
`
`pursuant to 35 U.S.C. § 312(a)(2). If, however, Request Nos. 2 & 3 (i.e.,
`
`Petitioner’s notice of indemnification claim and Google’s response thereto § 11 of
`
`the MADA) call for information that Petitioner contends does disclose any
`
`underlying basis for litigation positions, then such information can easily be
`
`redacted so that only responsive information remains (regarding claims of
`
`indemnity and responses thereto). Thus, the second Garmin factor weighs heavily
`
`in favor of granting additional discovery.
`
`C.
`
`Patent Owner Cannot Generate Equivalent Information by
`Other Means (Garmin Factor 3)
`
`The third Garmin factor asks whether the party seeking additional discovery
`
`has “the ability . . . to generate the requested information without need of
`
`discovery.” Garmin Int’l, IPR2012-00001, Paper 26 at p. 6. Although the MADA
`
`in Ex. 2002 is public, subsequently-executed MADA documents that have to exist,
`
`8
`
`
`
`as described above, are not.
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
` Plus, communications regarding claims of
`
`indemnification and responses thereto pursuant to the MADA also are not public.
`
`Finally, the same is true with respect to each interrogatory, as responsive
`
`information is known only to Samsung (and perhaps Google). As Patent Owner
`
`cannot generate equivalent information by any other means, the third Garmin
`
`factor weighs heavily in favor of granting additional discovery.
`
`D.
`
`Patent Owner’s Instructions Are Easily Understandable
`(Garmin Factor 4)
`The fourth Garmin factor asks whether the instructions for the additional
`
`discovery are clear and easily understandable. Garmin Int’l, IPR2012-00001,
`
`Paper 26 at p. 6. Patent Owner submits that the instructions in the Proposed
`
`Discovery Request (Ex. 2001) are clear and easily understandable. As such, the
`
`fourth Garmin factor weighs in favor of granting additional discovery.
`
`E.
`
`Patent Owner’s Requests Are Not Overly Burdensome
`(Garmin Factor 5)
`The fifth Garmin factor asks whether the requests are overly burdensome to
`
`answer. Garmin Int’l, IPR2012-00001, Paper 26 at p. 6. Patent Owner’s requests
`
`are narrowly tailored and seek only a small amount of materials that are directly
`
`related to this IPR—likely only about three to five documents in total. Plus, Patent
`
`Owner has attempted to track, where possible, portions of the Office Patent Trial
`
`Guide with respect to discovery requests related to the real party-in-interest issue.
`
`9
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`See OPTPG, § I(D)(1). So, any financial burden, burden on human resources, or
`
`burden on time should be negligible. Thus, the fifth Garmin factor weighs in favor
`
`of granting additional discovery.
`
`III. CONCLUSION
`In view of the foregoing, the requested additional discovery is necessary in
`
`the interests of justice. Accordingly, the Board should order the additional
`
`discovery set forth in Ex. 2001.
`
`
`
`Dated: August 28, 2014
`
`Respectfully submitted,
`
`/N. Andrew Crain/_____
`N. Andrew Crain
`(Reg. No. 45,442)
`Lead Counsel for Patent Owner
`Thomas | Horstemeyer, LLP
`400 Interstate North Pkwy Ste. 1500
`Atlanta, Georgia 30339
`Tel: (770) 933-9500
`Fax: (770) 951-0933
`
`10
`
`
`
`MOTION FOR ADDITIONAL DISCOVERY BY PATENT OWNER
`Case IPR2014-00717
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`In accordance with 37 C.F.R. §§ 42.6(e) and 42.107, the undersigned
`
`certifies that on the 28th day of August, 2014, a complete and entire copy of the
`
`SUBSTITUTE MOTION FOR ADDITIONAL DISCOVERY BY PATENT
`
`OWNER including exhibits relied upon were filed through the Patent Review
`
`Processing System and served electronically via email to the following individuals
`
`at their corresponding addresses:
`
`Andrea G. Reister
`Gregory S. Discher
`areister@cov.com
`gdischer@cov.com
`
`Attorneys for Petitioner.
`
`
`
`
`THOMAS | HORSTEMEYER, LLP
`
`
`/N. Andrew Crain/
`N. Andrew Crain (Reg. No. 45,442)
`Lead Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` August 28, 2014
`
`
`Date
`
`
`
`
`
`
`
`
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