`571-272-7822
`
`IPR2014-00717 Paper 20
`IPR2014-00735 Paper 20
`Date Entered: November 26, 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, PETER P. CHEN,
`and FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER AUTHORIZING PATENT OWNER TO FILE MOTION TO
`COMPEL CROSS EXAMINATION
`
`37C.F.R. § 42.51
`
`
`
`
`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.
`
`
`
`IPR2014-00717 (Patent 6,108,686)
`IPR2014-00735 (Patent 6,618,593 B1)
`
`
` Earlier in these proceedings, Black Hills Media LLC (“Patent
`Owner”) sought answers to interrogatories and production of documents
`from Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`and Samsung Telecommunications America, LLC (collectively,
`“Petitioner”) concerning whether Google, Inc., is a real party in interest or
`privy in these proceedings. Paper 15 (IPR2014-00717), Paper 12 (IPR2014-
`00735) (”Motion for Discovery”). In opposing Patent Owner’s Motion for
`Discovery, Petitioner filed the Declaration of Mr. Sungil Cho, Ex. 1009 in
`each proceeding (“Cho Declaration”). At that time, we granted-in-part
`Patent Owner’s Motion for Discovery and ordered Petitioner to produce
`certain documents and answer interrogatories. Paper 17 in each proceeding
`(“Discovery Order”). Subsequent to entry of our Discovery Order, the
`parties sought clarification as to whether our order required Petitioner to
`produce Mr. Cho for deposition. We advised the parties that our order did
`not require that Petitioner make Mr. Cho available for cross-examination.
`We conducted an initial conference in the above proceedings on
`November 20, 2014. During the conference, the parties agreed that
`Petitioner timely complied with our Discovery Order. However, Patent
`Owner now requests that, as a matter of routine discovery, we instruct
`Petitioner to produce Mr. Cho for cross-examination. Petitioner argued that
`because it has already complied with our Discovery Order, the matters
`addressed in the Cho Declaration are no longer at issue. Petitioner also
`represented that it will no longer rely upon the Cho Declaration, and there is
`no further need for Mr. Cho’s cross-examination. In addition, Petitioner
`noted that Mr. Cho is physically located in Korea and cross-examination
`would be burdensome.
`
`
`
`2
`
`
`
`IPR2014-00717 (Patent 6,108,686)
`IPR2014-00735 (Patent 6,618,593 B1)
`
`
`Patent Owner responded that, notwithstanding Petitioner’s compliance
`with our Discovery Order, the produced documents and the interrogatory
`answers raise questions that would be appropriate for cross-examination of
`Mr. Cho. Patent Owner contends that Petitioner introduced the Cho
`Declaration and that, as a matter of routine discovery, Patent Owner should
`be allowed to cross-examine Mr. Cho. Patent Owner further stated that it
`would accommodate Mr. Cho’s schedule and either conduct the cross-
`examination by video link or at a date and time when Mr. Cho is scheduled
`to be in the United States.
`During the conference we authorized Patent Owner to file a Motion to
`Compel the cross-examination of Mr. Cho with up to five pages of argument
`by December 2, 2014. We also authorized Petitioner to file an Opposition to
`Patent Owner’s Motion to Compel the cross-examination of Mr. Cho with
`up to five pages of argument by December 9, 2014.
`
`In view of the foregoing, it is
`ORDERED that Patent Owner is authorized to file a Motion to
`Compel the Cross-Examination of Mr. Cho with up to five pages of
`argument by December 2, 2014; and
`FURTHER ORDERED that Petitioner is authorized to file an
`Opposition to Patent Owner’s Motion to Compel the Cross-Examination of
`Mr. Cho with up to five pages of argument by December 9, 2014.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2014-00717 (Patent 6,108,686)
`IPR2014-00735 (Patent 6,618,593 B1)
`
`PETITIONER:
`Andrea Reister
`Gregory Discher
`COVINGTON & BURLING LLP
`areister@cov.com
`gdischer@cov.com
`
`
`PATENT OWNER:
`
`Andrew Crain
`Vivek Ganti
`Robert Gravois
`Kenneth Knox
`THOMAS│HORSTEMEYER, LLP
`andrew.crain@thomashorstemeyer.com
`vivek.ganti@thomashorstemeyer.com
`robert.gravios@thomashorstemeyer.com
`kenny.knox@thomashorstemeyer.com
`
`
`
`
`4
`
`
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