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
`
`---------------
`
`
`
`
`PATENT OWNER’S MOTION TO COMPEL
`THE CROSS-EXAMINATION OF MR. SUNGIL CHO
`
`
`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
`
`---------------
`
`
`
`
`PATENT OWNER’S MOTION TO COMPEL
`THE CROSS-EXAMINATION OF MR. SUNGIL CHO
`
`
`
`MOTION TO COMPEL THE CROSS-EXAMINATION OF MR. SUNGIL CHO
`IPR2014-00717
`
`On September 8, 2014, Petitioner submitted the Declaration of Mr. Sungil
`
`
`
`
`Cho (Ex. 1009), which contains statements regarding, inter alia, the level of
`
`involvement of Google in controlling or funding Petitioner for the present
`
`proceeding. Paper 17 (“the Additional Discovery Order”) relied upon statements
`
`made in Mr. Cho’s declaration. Patent Owner seeks to cross-examine Mr. Cho
`
`within the scope of the declaration as routine discovery under 37 C.F.R. §
`
`42.51(b)(1)(ii), but Petitioner has refused to make Mr. Cho available for cross-
`
`examination. Patent Owner files this Motion to Compel the Cross-Examination of
`
`Mr. Sungil Cho pursuant to the authorization granted in Paper 20.
`
`
`
`Patent Owner is entitled to cross-examine Mr. Cho within the scope of his
`
`declaration as routine discovery under 37 C.F.R. § 42.51(b)(1)(ii). Specifically, 37
`
`C.F.R. § 42.51(b)(1)(ii) states, “Cross examination of affidavit testimony is
`
`authorized within such time period as the Board may set” (emphasis added). The
`
`default time period set for cross-examination is set forth in 37 C.F.R. § 42.53(b)-
`
`(c). See Office Patent Trial Practice Guide (“OPTPG”), 77 Fed. Reg. 48756,
`
`48762 (Aug. 14, 2012).
`
`Indeed, the Board appears to have already acknowledged this very point on
`
`page 4 of the Additional Discovery Order, which states, “Patent Owner is also
`
`entitled to corroboration of the assertions in Mr. Cho’s declaration and to cross-
`
`examine Mr. Cho” (emphasis added). It is undisputed that cross-examination of
`
`
`
`1
`
`
`
`MOTION TO COMPEL THE CROSS-EXAMINATION OF MR. SUNGIL CHO
`IPR2014-00717
`
`
`Mr. Cho was not ordered as additional discovery, so the Board’s statement in the
`
`Additional Discovery Order appears to acknowledge that Patent Owner has the
`
`right to cross-examine Mr. Cho as routine discovery.
`
`
`
`A party presenting a witness’s testimony by declaration should arrange to
`
`make that witness available for cross-examination as routine discovery. OPTPG at
`
`48761. The USPTO’s AIA Blog1 further explains that “there is no need for a party
`
`to file a motion for ‘routine discovery’ with the Board, or serve a request for
`
`routine discovery on a party–parties have the burden to come forward and provide
`
`such material.” To deny Patent Owner the opportunity to cross-examine Mr. Cho
`
`within the scope of his declaration would disregard the Code of Federal
`
`Regulations, the OPTPG, and the guidance provided by the AIA Blog. Denying
`
`the opportunity to cross-examine Mr. Cho would also contradict the Board’s earlier
`
`statements made in this proceeding.
`
`
`
`During the Initial Conference Call, Petitioner contended that the Board had
`
`already ruled, in either the Additional Discovery Order or in an email
`
`communication (Ex. 2010), that Petitioner was not authorized to cross-examine
`
`Mr. Cho. Ex. 2009, 24:24-25:5. However, as noted above, page 4 the Additional
`
`Discovery Order specifically states that Patent Owner is entitled to cross-
`
`
`1 www.uspto.gov/blog/aia/entry/message_from_administrative_patent_judges
`
`
`
`2
`
`
`
`MOTION TO COMPEL THE CROSS-EXAMINATION OF MR. SUNGIL CHO
`IPR2014-00717
`
`
`examination Mr. Cho. Plus, the Board’s email did not preclude the cross-
`
`examination as routine discovery.
`
`
`
`During the Initial Conference Call, Petitioner also suggested that Patent
`
`Owner should not be entitled to cross-examine Mr. Cho because he is in Korea.
`
`Ex. 2009, 23:24-24:2, 32:2-5. Denying cross-examination of a declarant on this
`
`basis would be improper for several reasons. First, denying the opportunity for
`
`cross-examination based on the declarant being located outside of the United States
`
`would encourage parties in inter party review proceedings to rely on foreign
`
`declarants in order to shield their declarants from deposition.2 Second, Patent
`
`Owner has already expressed that it intends to work with Petitioner in order to
`
`facilitate the cross-examination by conducting the cross-examination at a
`
`convenient location in the United States or via video conference, if necessary.
`
`Third, Mr. Cho is employed by Petitioner, so Petitioner clearly has the ability to
`
`make this witness available at any time or location. Finally, it is unreasonable for
`
`Petitioner to argue that Patent Owner should not be able to cross-examine Mr. Cho
`
`2 It has not been established whether or not this declarant, who graduated from
`
`Fordham University School of Law in New York (see Ex. 2011), travels to the
`
`U.S. as part of his job duties, which involves the “coordination and supervision of
`
`outside counsel” with respect to “inter partes review” proceedings before the
`
`United States Patent & Trademark Office. Ex. 1009, ¶ 2.
`
`
`
`3
`
`
`
`MOTION TO COMPEL THE CROSS-EXAMINATION OF MR. SUNGIL CHO
`IPR2014-00717
`
`
`when it was Petitioner who decided to submit Mr. Cho’s declaration in the first
`
`place.
`
`
`
`During the Initial Conference Call, Petitioner also argued that Patent Owner
`
`should not be entitled to cross-examine Mr. Cho because Petitioner was no longer
`
`relying on Mr. Cho’s declaration. Petitioner even offered to withdraw the
`
`declaration of Mr. Cho after it has already considered by the Board and relied upon
`
`in the Additional Discovery Order. Ex. 2009, 30:22-31-6. To deny the
`
`opportunity to cross-examine Mr. Cho on this basis would set bad policy and
`
`precedent, as it would encourage parties to submit but then withdraw declarations
`
`if no longer useful to the submitting party or as a strategic effort to deny a
`
`deposition. Such a ruling would promote gamesmanship and would undermine the
`
`integrity of inter partes review.
`
`
`
`Mr. Cho’s declaration
`
`includes statements
`
`that directly contradict
`
`Petitioner’s responses to interrogatories.3 As one example (among others), Mr.
`
`3 Patent Owner is mindful of the Board’s request to explain the specific reasons
`
`why Patent Owner desires this deposition testimony and what it intends to cover,
`
`but is also concerned about not revealing work product or trial strategy to
`
`Petitioner. Patent Owner has tried to strike a balance and respectfully submits
`
`that anything further would tread into trial strategy. To be clear, Patent Owner
`
`only seeks to cross examine Mr. Cho within the scope of his prior declaration.
`
`
`
`4
`
`
`
`MOTION TO COMPEL THE CROSS-EXAMINATION OF MR. SUNGIL CHO
`IPR2014-00717
`
`
`Cho’s declaration includes the statement, “Substantive input was not received from
`
`Google,” indicating that Google provided some level of input. Ex. 1009, ¶ 6
`
`(emphasis added). By contrast, Petitioner’s response to interrogatories states,
`
`“There was no involvement by any individual not employed by Petitioner or
`
`Petitioner’s counsel of record.” Ex. 2012, p. 2 (emphasis added). This
`
`discrepancy illustrates the importance of being able to test and probe the
`
`statements made by Mr. Cho. Whether input is “substantive” is ultimately an issue
`
`for the Board, but Patent Owner should be able to obtain the underlying factual
`
`discovery on this point so that the Board can have all the facts. Plus, Patent Owner
`
`notes that in another proceeding, Petitioner also answered interrogatories denying
`
`that it was being indemnified in that proceeding, although it was later revealed
`
`through deposition testimony that Google was in fact indemnifying Petitioner in
`
`that proceeding. See Ex. 2005, 165:22-25; See also, Ex. 2006, pp. 13-14.
`
`
`
`In sum, to deny Patent Owner the opportunity to cross-examine Mr. Cho
`
`would disregard the Code of Federal Regulations, the OPTPG, the Board’s
`
`guidance in the AIA Blog, and the Board’s previous statements made in this
`
`proceeding. Moreover, Petitioner’s arguments against this discovery promote
`
`gamesmanship and prejudice to the opposing party. For these reasons, the Board
`
`should order Petitioner to make Mr. Cho available for cross-examination.
`
`
`
`
`
`5
`
`
`
`MOTION TO COMPEL THE CROSS-EXAMINATION OF MR. SUNGIL CHO
`IPR2014-00717
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Dated: December 2, 2014
`
`
`/N. Andrew Crain/
`Andrew Crain
`Lead Counsel for Patent Owner
`Thomas Horstemeyer
`
`6
`
`
`
`
`
`
`
`
`
`
`MOTION TO COMPEL THE CROSS-EXAMINATION OF MR. SUNGIL CHO
`IPR2014-00717
`
`CERTIFICATE OF SERVICE
`
`The undersigned herby certifies that a copy of the foregoing PATENT
`
`OWNER’S MOTION TO COMPEL THE CROSS-EXAMINATION OF MR.
`
`SUNGIL CHO was served on counsel of record via Federal Express No. XXXX
`
`and electronically via email on December 2, 2014.
`
`Andrea G. Reister
`Gregory S. Discher
`areister@cov.com
`gdischer@cov.com
`
`Covington & Burling LLP
`1201 Pennsylvania Avenue NW
`Washington, DC 20004
`
`Attorneys for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`THOMAS | HORSTEMEYER, LLP
`
`
`/N. Andrew Crain/
`N. Andrew Crain (Reg. No. 45,442)
`Lead Counsel for Patent Owner
`
` December 2, 2014
`
`
`Date
`
`7
`
`
`
`
`
`
`
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`
`
`
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