Trials@uspto.gov Paper No. 10 IPT2014-00735 Paper 17
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`571-272-7822
`IPR2014-00717 Paper 17
`Date Entered:
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
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`Petitioners,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
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`Patent Owner.
`____________
`
`Case IPR2014-00735
`Patent 6,618,593 B1
`Case IPR2014-00717
`Patent 6,108,686
`____________
`
`
`Before BRIAN J. McNAMARA, DAVID C. McKONE,
`PETER P. CHEN, and FRANCES L. IPPOLITO, Administrative Patent Judges.
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`McNAMARA, Administrative Patent Judge.
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`
`
`
`ORDER GRANTING-IN-PART MOTION FOR ADDITIONAL DISCOVERY
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`37C.F.R. § 42.51(b)(2)
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`

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`IPR2014-00735; IPR2014-00717
`Patent 6,618,593 B1; 6,101,686
`
`
`In Paper 10 in IPR2014-00735, which concerns U.S. Patent No. 6,618,593
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`B1 (“the ’593 Patent”) and Paper 8 in IPR2014-00717, which concerns U.S. Patent
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`No. 6,101,686 (“the ’686 Patent”), we authorized Black Hills Media LLC (“Patent
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`Owner”) to move for additional discovery concerning whether Google, Inc.
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`(“Google”) is a real party-in-interest in these proceedings. In each proceeding,
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`Patent Owner filed its Motion for Additional Discovery on August 22, 2014.
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`IPR2014-00735, Paper 12; IPR2014-00717 Paper 151 (“Mot.”). Samsung
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`Electronics Co., Ltd. (“Petitioner”) opposed Patent Owner’s Motion for Additional
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`Discovery on September 5, 2014. Paper 16 in each proceeding (“Opp.”).
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`Although not listed on the cover page of the oppositions, Samsung Electronics
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`America, Inc. and Samsung Telecommunications America, LLC, also appear to
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`oppose Patent Owner’s Motion for Additional Discovery. Opp. 1. Therefore, in
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`this order, we refer to the Samsung Electronics Co., Ltd., Samsung Electronics
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`America, Inc., and Samsung Telecommunications America, LLC collectively as
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`Petitioner.
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`We grant the motion in part.
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`Patent Owner seeks additional discovery to determine whether Petitioner
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`complied with the requirement to identify each real party-in-interest. See
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`37 C.F.R. § 42.8(b)(1). A party that funds, directs, or controls an IPR petition or
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`proceeding constitutes a real party-in-interest. See Office Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,760 (Aug. 12, 2014). Thus, the requested discovery must
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`be directed to this issue. Patent Owner must demonstrate that the additional
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`discovery sought is in the interests of justice. See 37 C.F.R. § 42.51(b)(2). In
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`deciding whether granting Patent Owner’s motion for additional discovery is in the
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`1 Paper 15 in IPR2014-00717 is Patent Owner’s Corrected Motion for Additional
`Discovery
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`
`
`2
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`

`

`IPR2014-00735; IPR2014-00717
`Patent 6,618,593 B1; 6,101,686
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`interests of justice, we consider whether Patent Owner is already in possession of
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`evidence tending to show beyond speculation that something useful will be
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`discovered in determining whether Google is a real party-in-interest or privy, i.e.,
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`whether Google funds, directs, or controls the Petitions. See, Garmin Int’l, Inc. v.
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`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, pp. 6–7 (PTAB
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`March 5, 2013) (Informative).
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`Patent Owner has become aware of an expired Mobile Application
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`Distribution Agreement (MADA) between Petitioner and Google. Mot. 2.
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`Paragraph 2.1 of the MADA grants petitioner entity Samsung Electronics Co. Ltd.
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`and its affiliates a license to distribute Google Applications, defined in para. 1.12,
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`when the Google Applications are pre-loaded onto a Device, as defined in para. 1.9
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`of the MADA. IPR2014-00735, Ex. 2003; IPR2014-00717, Ex. 2002. The
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`MADA also includes an indemnification provision under which Google, if
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`properly notified, has full control and authority over the defense of an infringement
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`claim against Petitioner. Id. at ¶ 11, Mot. 2.
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`With its Opposition to Patent Owner’s Motion, Petitioner submitted the
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`declaration of Mr. Sunghil Cho. Ex. 1009 in both proceedings. (“Cho Decl.”).
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`Mr. Cho’s declaration states that he is employed as a director of Samsung
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`Electronics, Ltd., that he is responsible for coordinating and supervising the filing
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`of petitions for inter partes review of third party patents, and that he coordinated
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`the review of petitions challenging patents asserted by Patent Owner in these
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`proceedings. Cho Decl. ¶1–2. Mr. Cho also states that the Petitioner entities
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`(referred in Mr. Cho’s declaration as “Samsung”) did not engage, coordinate with,
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`or communicate with outside counsel or representatives other than Covington &
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`Burling LLP (“Covington”) in connection with the preparation, review and filing
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`of the Petitions, did not send any drafts of the Petitions to Google, did not
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`3
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`

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`IPR2014-00735; IPR2014-00717
`Patent 6,618,593 B1; 6,101,686
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`authorize Covington to send any drafts to Google, did not receive any input from
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`Google or its counsel and that the Samsung has paid and is paying all legal fees
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`with respect to these proceedings without funding or contributions from Google or
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`any counsel or representatives of Google. Id. at ¶¶ 3–8. Petitioner further argues
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`that Samsung and Google are represented by different counsel in an ITC
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`investigation of the ’593 Patent and that any inference of Google’s involvement in
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`an Eastern District of Texas litigation concerning the ’686 Patent is speculation.
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`Opp. 4–7.
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`Patent Owner notes that, in another lawsuit (“the Apple suit”), in response to
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`an interrogatory, Petitioner denied it was seeking indemnification under the same
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`MADA, but Google later revealed during a deposition that it had been
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`indemnifying Petitioner. Mot. 3–4, citing IPR2014-00717, Exs. 2005 and 2006;
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`IPR2014-00735, Exs. 2009 and 2010. Petitioner responds that Patent Owner fails
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`to recognize that the present circumstances are different from those in the Apple
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`suit, where Patent Owner was not a party. Opp. 3–6. However, Petitioner does not
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`elaborate on these differences, other than to say that Samsung maintains full
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`control and authority of its defenses in the ITC, where Google has intervened, and
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`the Eastern District of Texas, where Google is not a party. Id.
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`Although Patent Owner was not a party to the Apple suit, the circumstances
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`in that case suggest that Patent Owner is entitled to inquire about whether Google
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`has any involvement in the present proceeding and whether any of Petitioner’s
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`entities are acting on behalf of Google in any way. Patent Owner is also entitled to
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`corroboration of the assertions in Mr. Cho’s declaration and to cross-examine
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`Mr. Cho. However, Mr. Cho’s declaration does not state whether he is located in
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`4
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`

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`IPR2014-00735; IPR2014-00717
`Patent 6,618,593 B1; 6,101,686
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`the United States and it is not possible for us to determine if Mr. Cho is available
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`for cross-examination.2
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`Patent Owner argues that, pursuant to the terms of the MADA, Google has
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`intervened and taken an active role in proceedings before the United States District
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`Court for the Eastern District of Texas and the United States International Trade
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`Commission (ITC) where Patent Owner asserted that Petitioner infringes the patent
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`that is the subject of IPR2014-00735 (“the ’593 Patent”). Mot. 2–3. See also
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`Ex. 2004, 17–19; Ex. 2005.3 In the case of the ’593 Patent, Patent Owner
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`specifically cites to arguments advanced by Google before the ITC that Google
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`believes Patent Owner’s case against Petitioner’s products centers on Google’s
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`apps. IPR2014-00735, Mot. 3–4. See also IPR2014-00735, Ex. 2007, 6.
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`Petitioner contends that the MADA invoked by Patent Owner was not in
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`effect at the time the disputes arose between Petitioner and Patent Owner. Opp. 1–
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`2. The first page of the MADA states that its term began on the Effective Date
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`(January 1, 2011) and continued through December 31, 2012. Consistent with this
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`information, the MADA states that it was in effect for a non-renewing term of two
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`years after its January 1, 2011, Effective Date, Ex. 2003 ¶ 6. Thus, the MADA
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`expired on December 31, 2012. The district court suit alleging Petitioner infringes
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`the ’593 Patent was filed on May 6, 2013. Ex. 2004, 17–19. Court records
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`indicate that a summons issued on May 7, 2013, and that Petitioners were served
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`shortly thereafter. The ITC complaint is dated May 13, 2013. The Petition in this
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`proceeding was accorded a filing date of May 7, 2014. Thus, the filing dates of the
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`lawsuits and the instant petition all occurred after the MADA expired. Petitioner
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`2 The Cho declaration also appears not to be in compliance with 28 U.S.C. § 1746.
`3 IPR2013-00717 concerns U.S. Patent No. 6,108,686 (the ’686 Patent), which has
`been asserted against Petitioner in the U.S. District Court for the Eastern District of
`Texas, but not in the ITC.
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`
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`5
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`

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`IPR2014-00735; IPR2014-00717
`Patent 6,618,593 B1; 6,101,686
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`does not indicate whether the lawsuits accuse products that were being sold under
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`the MADA. Patent Owner states that its lawsuits assert infringement with respect
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`to devices sold during the effective period of the MADA. Mot. 2. As discussed
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`below, Google’s actions in the ITC indicate that Petitioner’s accused products were
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`sold under the MADA and that Google may have an interest in the outcome of
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`these inter partes reviews, which challenge the patentablity of claims of the
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`’593 and ’686 Patents.
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`Petitioner also argues that Patent Owner has not demonstrated why the
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`MADA would apply to the present inter partes reviews brought by Petitioner
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`because the indemnification provision of the MADA concerns cases brought
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`against Petitioners, such as Patent Owner’s infringement lawsuits, rather than
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`proceedings brought by Petitioner against Patent Owner, such as this proceeding.
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`Opp. 2. Although the MADA allows Petitioner to “join in the defense with its own
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`counsel at its own expense,” the MADA provides Google “full control and
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`authority over the defense” of “any third party lawsuit or proceeding brought
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`against” Petitioner. Google has the authority to defend, or at its option settle, any
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`third party lawsuit or proceeding, and reserves the right to terminate Petitioner’s
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`continued distribution of or access to the licensed subject matter. IPR2013-00717,
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`Ex. 2002 ¶ 11.1; IPR2014-00735, Ex. 2001, ¶ 11.1. The MADA is silent about
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`whether, in circumstances where Google might indemnify, Petitioner can challenge
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`the patentability of patent claims asserted against it by a third party in an inter
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`partes review without ceding full authority and control of such a proceeding to
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`Google. Thus, we do not base our decision on the MADA alone.
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`In granting Google’s motion to intervene in the ITC proceeding, the ITC
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`determined that Google has a “[c]ompelling interest in the investigation because its
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`software is accused with respect to all six accused patents,” which includes the
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`
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`6
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`IPR2014-00735; IPR2014-00717
`Patent 6,618,593 B1; 6,101,686
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`’593 Patent, and that “Google’s interests are not adequately represented by the
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`existing parties” to that proceeding. IPR2014-00735, Ex. 1012, 5; IPR2014-00717,
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`Ex. 1011, 5. In a footnote, the administrative law judge further stated that he
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`“[s]ees no reason to limit Google’s participation to only the issue of infringement.
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`It is therefore determined that Google may participate fully as to all issues litigated
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`in this investigation.” Id. n. 11. Thus, notwithstanding the literal language of the
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`MADA, it appears that Google has an interest in a potential determination in this
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`proceeding that the ’593 Patent claims are unpatentable. We therefore find that
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`Petitioner has demonstrated possession of evidence tending to show beyond mere
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`speculation that something useful will be discovered in determining whether
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`Google is a real party-in-interest or privy, i.e., whether Google funds, directs, or
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`controls the Petition.
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`We next consider whether Patent Owner’s discovery requests are directed to
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`whether Google is a real party-in-interest or seek litigation positions, whether
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`Patent Owner can generate the requested information by other means, whether
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`Patent Owner’s requests are clear, and whether Patent Owner’s requests are
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`burdensome on Petitioner’s financial and human resources. See Garmin Int’l, Inc.
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`v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, pp. 6–7 (PTAB
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`March 5, 2013).
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`Patent Owner proposes three similar interrogatories in each proceeding.
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`IPR2013-00735, Ex. 2002; IPR2014-00717 Ex. 2001. It is apparent that the
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`information sought in the interrogatories cannot be generated independently by
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`Patent Owner, because the interrogatories concern information known only to
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`Petitioner, and perhaps, Google.
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`Interrogatory No. 1 requests the identities of all individuals who were
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`provided a copy of any drafts of the Petition before it was filed. Interrogatory
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`7
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`IPR2014-00735; IPR2014-00717
`Patent 6,618,593 B1; 6,101,686
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`No. 1 is overly broad and burdensome because it encompasses clerical and other
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`staff with no substantive role in the preparation of the Petition. In addition, the
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`only issue before us is whether Google is a real party-in-interest or privy.
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`Interrogatory No. 1 is not limited to persons associated with Google. Rather than
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`deny the discovery, we limit Interrogatory No. 1 to the identification of persons or
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`entities that Google or its counsel directed Petitioner or Petitioner’s counsel to
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`provide with a copy of one or more drafts of the Petition. We deny all other
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`discovery requested in Interrogatory No. 1 as beyond the proper scope of inquiry
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`and overly burdensome.
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` The second interrogatory asks Petitioner to identify each individual not
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`employed by Petitioner or Petitioner’s counsel who was involved with preparing
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`the Petition, and the degree of involvement of each such individual in the filing of
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`the Petition. Because the second interrogatory is limited to the scope of § I(D)(1)
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`of the Office Trial Practice Guide, we agree that the discovery is appropriate.
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`Interrogatory No. 3 asks Petitioner to describe all financial transactions
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`(payments, transfers, refunds, etc.) made or agreed upon in relation to the
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`indemnification provisions of the MADA, or a MADA that may have become
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`effective after December 31, 2012, and relates to a claim of infringement of the
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`relevant patents. Interrogatory No. 3 is overly broad because it is not limited to
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`claims concerning Patent Owner. Interrogatory No. 3 also does not distinguish
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`between transactions related to indemnifications for infringement and those related
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`to the current proceedings. Therefore, we limit the discovery requested in
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`Interrogatory No. 3 to transactions related to these proceedings.
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`Patent Owner also has presented three document production requests.
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`Request No. 1 is for a copy of each MADA between Petitioner and Google having
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`an effective date after Dec. 31, 2012. Request No. 1 is overly broad. The only
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`8
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`

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`IPR2014-00735; IPR2014-00717
`Patent 6,618,593 B1; 6,101,686
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`concern in this proceeding is whether Google actually is a real party-in-interest or
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`privy. Our decision to allow additional discovery by way of interrogatory is not
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`based solely on the MADA, but also on representations made by Google in the
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`ITC.4 Although the MADA provides evidence supporting limited additional
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`discovery, the exact terms of the MADA are not dispositive of the issue before us.
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`If the responses to the discovery we authorize provide evidence that Google has
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`acted in a manner that establishes it is a real party-in-interest, it may be immaterial
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`whether Google’s role was the result of an indemnification pursuant to the MADA
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`discussed above, another MADA, or some other agreement. In addition, should
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`Google’s real party-in-interest status change, Petitioner is required to update its
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`Mandatory Notices. 37 C.F.R. § 42.8(a). We further note that Google’s motion to
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`intervene in the ITC proceeding concerning the ’593 Patent, which is the subject of
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`IPR2013-00735, is not based on obligations under the MADA. See, IPR2014-
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`00735, Ex. 2007. In view of the interrogatories we have authorized above (i.e.,
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`requiring Petitioner to identify persons Google directed Petitioner to provide drafts
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`of the petitions and any person not employed by Petitioner or its counsel who
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`participated in preparing the petitions), as well as the other document Requests we
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`authorize, a copy of a more recent MADA is not required at this time.
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`Request No. 2 seeks documents related to notification by Petitioner to
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`Google of a claim for indemnification under the MADA (or a more recent MADA)
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`pertaining to a claim of patent infringement. Request No. 3 seeks documents
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`related to Google’s response to any such notifications. Requests Nos. 2 and 3 are
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`overly broad because they concern all notifications, including for claims not made
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`by Patent Owner, and responses to all such notifications. Request Nos. 2 and 3
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`4 While Google’s arguments before the ITC concern the ’593 Patent, we extend
`that reasoning to the ’686 Patent that is the subject of IPR2014-00717.
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`9
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`IPR2014-00735; IPR2014-00717
`Patent 6,618,593 B1; 6,101,686
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`also are not limited to IPR2014-00735 and IPR2014-00717. Therefore, we limit
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`Requests Nos. 2 and 3 to documents constituting or concerning notifications and
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`responses to notifications under any agreement between Petitioner and Google,
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`relating to the challenges to patentability asserted in IPR2014-00735 and IPR2014-
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`00717.
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`In consideration of the above, it is
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`ORDERED that Patent Owner’s Motion for Additional Discovery is
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`GRANTED-IN-PART and DENIED-IN-PART;
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`FURTHER ORDERED the discovery sought in Patent Owner’s
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`Interrogatory No. 1 in IPR2014-00735 and IPR2014-00717 is GRANTED, but
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`limited to identification of persons or entities that Google or its counsel directed
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`Petitioner or Petitioner’s counsel to provide with a copy of one or more drafts of
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`the Petition, and that all other discovery sought in Interrogatory No. 1 is DENIED;
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`FURTHER ORDERED that the discovery sought in Patent Owner’s
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`Interrogatory No. 2 in IPR2014-00735 and IPR2014-00717 is GRANTED;
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`FURTHER ORDERED that the discovery sought in Patent Owner’s
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`Interrogatory 3 in IPR2014-00735 and IPR2014-00717 is GRANTED, but limited
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`to transactions related to IPR2014-00735 and IPR2014-00717, and that all other
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`discovery sought in Interrogatory No. 3 is DENIED;
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`FURTHER ORDERED, that Patent Owner’s document Request No. 1 is
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`DENIED;
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`FURTHER ORDERED that Patent Owner’s document Request No. 2 and
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`document Request No. 3 in IPR2014-00735 and IPR2014-00717 are GRANTED,
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`but limited to documents constituting or concerning notifications under any
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`agreement between Petitioner and Google (Request No. 2) and responses to such
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`notifications (Request No. 3), relating to the challenges to patentability in
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`10
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`IPR2014-00735; IPR2014-00717
`Patent 6,618,593 B1; 6,101,686
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`IPR2014-00735 and IPR2014-00717. Requests for production of all other
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`documents under Request No. 2 and Request No. 3 are DENIED.
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`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
`
`
`
`
`11
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`