`
`
`
`By: Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`___________________
`
`Case No. IPR2014-00920
`U.S. Patent 6,771,970
`___________________
`
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`Page(s)
`
`PRECISE RELIEF REQUESTED ................................................................. 1
`I.
`FACTUAL BACKGROUND ......................................................................... 2
`II.
`III. REASONS FOR THE RELIEF REQUESTED ............................................. 5
`Patent Owner’s Discovery Requests Are Based On More Than
`A.
`a Possibility of Finding Something Useful .......................................... 6
`Patent Owner’s Discovery Requests Do Not Seek Litigation
`Positions and Underlying Factual Basis ............................................. 11
`Patent Owner Has No Ability to Generate Equivalent
`Information By Other Means ............................................................. 12
`Patent Owner’s Instructions Are Easily Understandable ................... 13
`Patent Owner’s Discovery Requests Are Not Overly
`Burdensome to Answer ...................................................................... 13
`IV. CONCLUSION ............................................................................................. 14
`
`B.
`
`C.
`
`D.
`E.
`
`i
`
`
`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Arris Group, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00746, Paper 15 (PTAB Jul. 24, 2014) ................................................. 6
`
`Page(s)
`
`Asahi Glass Co., Ltd. v. Toledo Eng’g Co.,
`505 F. Supp. 2d 423 (N.D. Ohio 2007) .......................................................... 1, 10
`
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
`IPR2013-00453, Paper 40 (PTAB Apr. 30, 2014) ............................................... 6
`
`Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013). ...................................... 5, 6, 13
`
`Samsung Electronics Co., Ltd. v. Black Hills Media, LLC,
`IPR2014-00735, Paper 17 (PTAB Oct. 2, 2014) .................................................. 6
`
`Synopsys, Inc. v. Mentor Graphics Corporation,
`IPR2012-00042, Paper 60 (PTAB Feb. 19, 2014) ................................................ 1
`
`
`
`STATUTES
`
`35 U.S.C. § 315(b) ............................................................................................passim
`
`35 U.S.C. § 316(a)(5) ................................................................................................. 5
`
`
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.101(b) .......................................................................................... 1, 11
`
`77 Fed. Reg. 48756 .................................................................................................... 5
`
`
`
`
`
`ii
`
`
`
`Ex. #
`
`2101
`
`2102
`
`2103
`
`2104
`
`2105
`
`2106
`
`2107
`
`2108
`
`2109
`
`2110
`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`Description
`
`Corrected Petition For Inter Partes Review of U.S. Patent No.
`6,771,970, IPR2014-00199, Paper 6.
`
`Decision Institution of Inter Partes Review 37 C.F.R. § 42.108,
`IPR2014-00199, Paper 18.
`
`Petitioner’s Request For Rehearing Pursuant To 37 C.F.R. §§
`42.71(c)–(d) For Partial Reconsideration Of The Decision To
`Institute, IPR2014-00199, Paper 20.
`
`Decision On Request For Rehearing 37 C.F.R. § 42.71(d), IPR2014-
`00199, Paper 24.
`
`U.S. Patent No. 6,321,092 issued to Fitch, IPR2014-00199, Exhibit
`1004.
`
`April 17, 2013, Copy of email from Edward M. Abbati, Vice
`President of Finance for Location Labs, to Richard Sanders, Chief
`Executive Officer of Callwave Communications, LLC.
`
`Sprint’s Answer to CallWave’s Complaint in CallWave
`Communications, LLC v. Sprint Nextel Corp. and Google, Inc., Civil
`Action No. 1:12-cv-01702-RGA (D. Del.), Docket No. 71.
`
`AT&T’s Answer to CallWave’s Second Amended Complaint in
`CallWave Communications, LLC v. AT&T Mobility, LLC, and
`Google, Inc., Civil Action No. 1:12-cv-01701-RGA (D. Del.), Docket
`No. 76.
`
`T-Mobile’s Answer to CallWave’s Complaint in CallWave
`Communications, LLC v. T-Mobile USA Inc. and Google, Inc., Civil
`Action No. 1:12-cv-01703-RGA (D. Del.), Docket No. 68.
`
`Petitioner’s Opposition to Patent Owner’s Motion for Additional
`Discovery, IPR2014-00199, Paper 33.
`
`
`
`iii
`
`
`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`Description
`
`Petitioner’s Objections and Responses to CallWave’s Subpoena in
`CallWave Communications, LLC v. AT&T Mobility, LLC, and
`Google, Inc., Civil Action No. 1:12-cv-01701-RGA (D. Del.).
`
`Defendants’ Opening Brief In Support Of Motion To Stay
`Proceedings On The ’970 Patent Pending Inter Partes Review By The
`Patent Trial And Appeal Board, Civil Action No. 1:12-cv-01702-
`RGA (D. Del.), Docket No. 104.
`
`Case Docket as of September 9, 2014, CallWave Communications,
`LLC v. Sprint Nextel Corp. and Google, Inc., Civil Action No. 1:12-
`cv-01702-RGA (D. Del.).
`
`Stipulation and Proposed Order Regarding Service and Extension of
`Time to Respond to Complaint, CallWave Communications, LLC v.
`AT&T Mobility, LLC, and Google, Inc., Civil Action No. 1:12-cv-
`01701-RGA (D. Del.), Docket No. 8.
`
`Case Docket as of September 9, 2014, CallWave Communications,
`LLC v. T-Mobile USA Inc. and Google, Inc., Civil Action No. 1:12-
`cv-01703-RGA (D. Del.).
`
`September 16, 2014 Hearing Transcript Excerpt, CallWave
`Communications, LLC v. AT&T Mobility, LLC, and Google, Inc.,
`Civil Action No. 1:12-cv-01701-RGA (D. Del.).
`
`August 28, 2014 Hearing Transcript Excerpt, CallWave
`Communications, LLC v. Wavemarket, Inc., Civil Action No.
`14MC80112-JSW (LB) (N.D. Cal.).
`
`
`Ex. #
`
`2111
`
`2112
`
`2113
`
`2114
`
`2115
`
`2116
`
`2117
`
`
`
`NEW EXHIBITS
`
`Ex. #
`
`2118
`
`Description
`
`Patent Owner’s Proposed Discovery Requests to Petitioner.
`
`
`iv
`
`
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`IPR2014-00920
`U.S. Patent 6,771,970
`
`Description
`
`September 16, 2014 Hearing Full Transcript, CallWave
`Communications, LLC v. AT&T Mobility, LLC, and Google, Inc.,
`Civil Action No. 1:12-cv-01701-RGA (D. Del.).
`
`Case Docket as of January 7, 2015, CallWave Communications, LLC
`v. AT&T Mobility, LLC, and Google, Inc., Civil Action No. 1:12-cv-
`01701-RGA (D. Del.).
`
`Agreed Protective Order, CallWave Communications, LLC v. Sprint
`Nextel Corp. and Google, Inc., Case No. 1:12-cv-01702-RGA, Docket
`No. 136.
`
`
`Ex. #
`
`2119
`
`2120
`
`2121
`
`
`
`
`
`v
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`IPR2014-00920
`U.S. Patent 6,771,970
`
`I.
`
`PRECISE RELIEF REQUESTED
`
`Pursuant to the Board’s December 30, 2014 Order (Paper 14), Patent Owner
`
`LocatioNet Systems, Ltd. (“Patent Owner”) hereby submits this motion for
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`additional discovery of Petitioner Wavemarket Inc. d/b/a Location Labs
`
`(“Petitioner”) to provide the Board with evidence concerning the contractual
`
`indemnitor-indemnitee relationship between Petitioner and each of its customers,
`
`Sprint Nextel Corp. (“Sprint”), AT&T Mobility, LLC (“AT&T”), and T-Mobile
`
`USA, Inc. (“T-Mobile”).
`
`Such additional information is highly relevant under 35 U.S.C. § 315(b) and
`
`37 C.F.R. § 42.101(b) and serves to further support and confirm that Petitioner has
`
`established privity relationships with each of its customers, Sprint, AT&T, and T-
`
`Mobile. See Asahi Glass Co., Ltd. v. Toledo Eng’g Co., 505 F. Supp. 2d 423, 434–
`
`36 (N.D. Ohio 2007) (finding privity based on an indemnification agreement,
`
`retention of shared counsel, and a joint defense agreement). Under 37 C.F.R. §
`
`42.101(b), evidence regarding privity relationships up until the filing of the petition
`
`are relevant. See Synopsys, Inc. v. Mentor Graphics Corporation, IPR2012-00042,
`
`Paper 60 at 12 (PTAB Feb. 19, 2014) (holding that privity relationships up until
`
`the time a petition is filed are relevant).
`
`Specifically, Patent Owner respectfully requests that the Board authorize the
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`targeted and specific proposed discovery requests set forth in Exhibit 2118.
`
`1
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`
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`IPR2014-00920
`U.S. Patent 6,771,970
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`II.
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`FACTUAL BACKGROUND
`
`Petitioner has refused voluntary discovery regarding its contractual
`
`indemnitor-indemnitee relationship with each of its customers, Sprint, AT&T, and
`
`T-Mobile, in an attempt to avoid the statutory time bar under 35 U.S.C. § 315(b).
`
`Since December 2012, each of Petitioner’s customers, Sprint, AT&T, and T-
`
`Mobile have been defendants in a patent infringement lawsuit involving U.S.
`
`Patent No. 6,771,970 (“the ’970 Patent”) in the District Court of Delaware.
`
`Petition (Paper 3) at 2 (citing Civil Action Nos. 1:12-cv-1701-RGA (AT&T), 1:12-
`
`cv-1702-RGA (Sprint), and 1:12-cv-1703-RGA (T-Mobile) (collectively “district
`
`court proceedings”)). Sprint, AT&T, and T-Mobile have all been represented by
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`counsel from the same law firm—Dentons US LLP (“Dentons”) since early 2013.
`
`See Ex. 2113 at 5, Docket No. 18 and Ex. 2115 at 6, Docket No. 23; Ex. 2107 at
`
`17; Ex. 2108 at 14; Ex. 2109 at 11. On April 17, 2013, Edward M. Abbati, Vice
`
`President of Finance for Petitioner admitted to Richard Sanders, the CEO of Patent
`
`Owner, that Petitioner provides the “Family Locator service” to Sprint, AT&T, and
`
`T-Mobile, which is implicated in the respective patent infringement lawsuits
`
`involving the ’970 Patent. See Ex. 2106. On November 27, 2013, Petitioner and
`
`its counsel, also from Dentons, filed its first inter partes review petition, IPR2014-
`
`00199. See IPR2014-00199, Paper 4. After the Board denied institution of claims
`
`2
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`
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`IPR2014-00920
`U.S. Patent 6,771,970
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`1–17, and 19 in IPR2014-00199, Petitioner filed the instant Petition challenging
`
`the same claims on June 9, 2014. See IPR2014-00199, Paper 18.
`
`By November 2013, there can be no dispute that Petitioner and each of its
`
`customers Sprint, AT&T, and T-Mobile were all represented by counsel from the
`
`same law firm, Dentons. Petitioner has attempted to thwart discovery regarding its
`
`obligation to indemnify Sprint, AT&T, and T-Mobile, its response(s) to their
`
`indemnification demands, and acceptance of the litigation defense on behalf each
`
`of Sprint, AT&T, and T-Mobile in the respective district court proceedings. On
`
`one hand, Petitioner previously told the Board that the appropriate forum for such
`
`discovery is the District Court. See Paper 14 at 2; see also IPR2014-00199, Paper
`
`33 at 9–11. And on the other, Petitioner and its customers, Sprint, AT&T, and T-
`
`Mobile, have resisted discovery in the District Court, arguing the exact opposite—
`
`that the appropriate forum for seeking such discovery is the Patent and Trademark
`
`Appeals Board.
`
`Patent Owner sought the requested discovery in the district court
`
`proceedings, but the District Court ruled that discovery regarding the issue of
`
`privity between each of Sprint, AT&T, and T-Mobile should not be sought in the
`
`District Court, but rather the appropriate forum for such discovery is the IPR
`
`proceeding. During a September 16, 2014 discovery hearing before Judge Richard
`
`Andrews of the District Court of Delaware, Judge Andrews ruled that:
`
`3
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`
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`IPR2014-00920
`U.S. Patent 6,771,970
`
`THE COURT: When they filed the second IPR, that’s a question
`for the PTAB. I don’t really think that’s a legitimate purpose to
`be getting discovery in this case. ... I mean, that would – obviously,
`I’m not in the advice-giving business – but I just don’t think that’s a
`legitimate purpose for seeking discovery in this case. … In any
`event, I’m not responsible. I’m barely responsible for what I do. I’m
`not responsible for what they do, but I’m – this is, in my opinion, not
`the right place to be getting documents for use in the PTAB.
`
`See Exhibit 2119 at 26 (emphasis added).
`
`In addition, Petitioner previously argued to the Board that certain documents
`
`had already been produced to Patent Owner in the district court proceedings,
`
`including Petitioner’s license and services agreements containing indemnification
`
`provisions with each of Sprint, AT&T, and T-Mobile, knowing full well that the
`
`Protective Order in the district court proceedings precluded Patent Owner from
`
`providing the Board the indemnification agreements produced in the district court
`
`proceedings.1 See IPR2014-00199, Paper 33 at 9–11. Indeed, Patent Owner has
`
`no other means to provide the Board such crucial evidence.
`
`Accordingly, Patent Owner respectfully requests that the Board grant this
`
`motion for additional discovery, specifically the discovery requests set forth in
`
`
`1 Petitioner even identified the documents by their production Bates numbers in the
`
`district court proceedings.
`
`4
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`
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`IPR2014-00920
`U.S. Patent 6,771,970
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`Exhibit 2118, seeking documents and communications that Patent Owner cannot
`
`obtain by any other means and that Petitioner has already admitted exist. Such
`
`additional discovery concerning Petitioner’s obligation to indemnify its customers,
`
`Sprint, AT&T, and T-Mobile, its response(s) to their indemnification demands, and
`
`its acceptance of the litigation defense on behalf of Sprint, AT&T, and T-Mobile is
`
`necessary in the interest of justice.
`
`III. REASONS FOR THE RELIEF REQUESTED
`Patent Owner moves to take targeted and specific discovery from Petitioner
`
`to provide the Board with evidence concerning Petitioner’s obligation to indemnify
`
`Sprint, AT&T, and T-Mobile, its response(s) to their indemnification demands, and
`
`its acceptance of the litigation defense on behalf of Sprint, AT&T, and T-Mobile.
`
`Such additional discovery serves to further support and confirm that the instant
`
`IPR petition is time-barred under 35 U.S.C. § 315(b). Section 315(b) protects
`
`Patent Owner from harassment via successive petitions by the related parties,
`
`prevents Petitioner from having a “second bite at the apple,” and protects the
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`integrity of the USPTO and Federal Courts. See Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48759. Patent Owner’s discovery requests are
`
`therefore “necessary in the interests of justice” under 35 U.S.C. § 316(a)(5)), and
`
`meets each of the factors set forth in Garmin Int’l, Inc. v. Patent of Cuozzo Speed
`
`Techs. LLC, Case No. IPR2012-00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013).
`
`5
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`
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`IPR2014-00920
`U.S. Patent 6,771,970
`
`A.
`
`Patent Owner’s Discovery Requests Are Based On More Than a
`Possibility of Finding Something Useful
`
`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, IPR2012-00001, Paper 26 at 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 7.
`
`Patent Owner’s requests for production Nos. 1, 3, and 5 in Exhibit 2118 seek
`
`the specific license and services agreements containing the relevant
`
`indemnification provisions Petitioner has with its customers, Sprint, AT&T, and T-
`
`Mobile concerning the district court proceedings. See, e.g., Arris Group, Inc. v. C-
`
`Cation Technologies, LLC, IPR2014-00746, Paper 15 at 5 (PTAB Jul. 24, 2014)
`
`(granting Patent Owner’s discovery request for indemnification agreements);
`
`Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00735, Paper
`
`17 at 7–11 (PTAB Oct. 2, 2014) (same); Atlanta Gas Light Co. v. Bennett
`
`Regulator Guards, Inc., IPR2013-00453, Paper 40 at 5–6 (PTAB Apr. 30, 2014)
`
`(same).
`
`In fact, Petitioner has already acknowledged that these agreements were
`
`produced in the district court proceedings and has identified these agreements by
`
`Bates number in its representations to the Board. See Ex. 2110 at 10–11. Sprint
`
`produced its “Master Services Agreement” with Petitioner on July 15, 2014
`
`6
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`
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`IPR2014-00920
`U.S. Patent 6,771,970
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`bearing Bates No. SPT-CW_D00000446–00000567; AT&T produced its “License
`
`and Services Agreement” with Petitioner on July 14, 2014 bearing Bates No. ATT-
`
`CW-FM-00005261–00005336; and T-Mobile produced its “License and Services
`
`Agreement” with Petitioner on March 14, 2014 bearing Bates No. TM-
`
`CW00000074–00000113. Id.
`
`Petitioner’s indemnification agreements with its customers, Sprint, AT&T,
`
`and T-Mobile are highly relevant to the issue of privity and the time bar under
`
`Section 315(b), including when Petitioner established its obligation to indemnify
`
`Sprint, AT&T, and T-Mobile, the scope and nature of Petitioner’s obligations to
`
`indemnify Sprint, AT&T, and T-Mobile, and the terms of Petitioner’s
`
`indemnification of Sprint, AT&T, and T-Mobile.
`
`Patent Owner’s requests for production Nos. 2, 4, and 6 in Exhibit 2118 seek
`
`the communications by and between Petitioner and each of its customers, Sprint,
`
`AT&T, and T-Mobile, relating to Petitioner’s indemnification of Sprint, AT&T,
`
`and T-Mobile pursuant to the aforementioned indemnification agreements,
`
`Sprint’s, AT&T’s, and T-Mobile’s indemnification demand on Petitioner,
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`Petitioner’s response(s) to their indemnification demands, and Petitioner’s
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`acceptance of the litigation defense on behalf of Sprint, AT&T, and T-Mobile in
`
`the respective district court proceedings in the District of Delaware.
`
`7
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`
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`IPR2014-00920
`U.S. Patent 6,771,970
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`Prior to the filing of the patent infringement lawsuits in December 2012, it is
`
`indisputable that Sprint, AT&T, and T-Mobile were customers of Petitioner and
`
`Petitioner was obligated to indemnify Sprint, AT&T, and T-Mobile in each of the
`
`respective district court proceedings. See Ex. 2106. Indeed, Petitioner confirmed
`
`to Magistrate Judge Laurel Beeler of the Northern District of California during an
`
`August 28, 2014 hearing that Petitioner has indemnified Sprint, AT&T, and T-
`
`Mobile in the respective district court proceedings, and Petitioner’s Vice President
`
`of Finance, Mr. Edward Abbati, attended a settlement conference pursuant to
`
`Petitioner’s obligation to indemnify Sprint, AT&T, and T-Mobile. See Ex. 2117 at
`
`17, lines 1–4 (“And Mr. Abbati from [Petitioner] was there because of
`
`indemnification. Ultimately, [Petitioner has] to pay for any settlement.”)
`
`(emphasis added).
`
`Moreover, Mr. Kirk Ruthenberg of Dentons, counsel for Sprint and T-
`
`Mobile, confirmed before Judge Andrews of the District Court of Delaware that
`
`Petitioner had accepted the litigation defense of Sprint, AT&T, and T-Mobile
`
`during a September 16, 2014 discovery hearing. Ex. 2116 at 5, lines 16–19.
`
`Requests for production Nos. 2, 4, and 6 are highly relevant to the issue of privity
`
`and the time bar under Section 315(b), including when Sprint, AT&T, and T-
`
`Mobile demanded indemnification from Petitioner, the nature of Petitioner’s
`
`response(s) to Sprint’s, AT&T’s, and T-Mobile’s indemnification demand, and the
`
`8
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`
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`IPR2014-00920
`U.S. Patent 6,771,970
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`terms of Petitioner’s acceptance of the litigation defense on behalf of Sprint,
`
`AT&T, and T-Mobile in the district court proceedings.
`
`Patent Owner’s request for production No. 7 seeks the joint defense and/or
`
`common interest agreements entered into by and between Petitioner and Sprint,
`
`AT&T, and/or T-Mobile relating to the district court proceedings. The record
`
`evidence demonstrates that Petitioner and each of Sprint, AT&T, and T-Mobile
`
`have been operating pursuant to a joint defense and/or common interest agreement
`
`since prior to the filing of the instant Petition. Specifically, on February 21, 2014,
`
`in response to a discovery subpoena to Petitioner, Petitioner’s counsel from
`
`Dentons asserted the joint defense and common interest privileges in refusing to
`
`produce the requested joint defense or common interest agreements. See Ex. 2111
`
`at 12–15. Furthermore, in response to specific discovery requests for such
`
`agreements with Sprint, AT&T, and T-Mobile, Petitioner again asserted the joint
`
`defense and common interest privileges and did not deny the existence of such
`
`agreements. Id. at 26–27. Request for production No. 7 is highly relevant to the
`
`issue of privity and the time bar under Section 315(b), including the nature of the
`
`close relationship between Petitioner and each of its customers, Sprint, AT&T, and
`
`T-Mobile and their acknowledgement of shared goals and mutual interests in
`
`defending against the patent infringement claims in the district court proceedings.
`
`9
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`IPR2014-00920
`U.S. Patent 6,771,970
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`Even if Petitioner asserts a privilege to withhold its joint defense and/or
`
`common interest agreements with its indemnitees, an acknowledgement of their
`
`existence (by entries in a privilege log) will assist the Board in determining that a
`
`privity relationship exists between Petitioner and each of its indemnitees.
`
`Patent Owner’s request for production No. 8 seeks the engagement and/or
`
`retainer agreements between the law firm Dentons and Petitioner regarding legal
`
`representation of Sprint, AT&T, and/or T-Mobile in the district court proceedings.
`
`As discussed above, the record evidence demonstrates that Petitioner had an
`
`obligation to indemnify each of its customers, Sprint, AT&T, and T-Mobile,
`
`Petitioner decided to indemnify each of Sprint, AT&T, and T-Mobile, and
`
`Petitioner also accepted the litigation defense of the district court proceedings on
`
`behalf of Sprint, AT&T, and T-Mobile.
`
`As part of its indemnification obligations, Petitioner retained shared counsel
`
`from Dentons to represent each of Sprint, AT&T, and T-Mobile and coordinate the
`
`litigation defense of the respective district court proceedings. Asahi Glass Co., 505
`
`F. Supp. 2d at 436 (“[T]he existence of shared counsel supports a finding of privity
`
`where other facts present suggest that a unique relationship exists between two
`
`parties.”). Indeed, counsel from Dentons entered appearance on behalf of Sprint
`
`and T-Mobile approximately two months after each was served with a complaint
`
`alleging infringement of the ’970 Patent—on April 13, 2013 (see Ex. 2113 at 4–5,
`
`10
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`
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`IPR2014-00920
`U.S. Patent 6,771,970
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`Docket Nos. 6 and 18) for Sprint and on May 13, 2013 (see Ex. 2115 at 5–6,
`
`Docket Nos. 9 and 23) for T-Mobile. Similarly, counsel from Dentons entered
`
`appearance on behalf of AT&T on June 18, 2013, which is approximately five
`
`months after AT&T was served with a complaint alleging infringement of the ’970
`
`Patent. See Ex. 2114 at 1 and Ex. 2120 at 10, Docket No. 35.
`
`Thus, the Dentons firm had already been representing each of the
`
`indemnitees for at least eleven months (and over a year in the cases of Sprint and
`
`T-Mobile) before the Dentons firm filed an IPR petition on behalf of the
`
`indemnitor-Petitioner.
`
`Request for production No. 8 is highly relevant to the issue of privity and the
`
`time bar under Section 315(b), including when Petitioner retained counsel from
`
`Dentons to represent its customers, Sprint, AT&T, and T-Mobile, the terms and
`
`nature of Petitioner’s funding of the litigation defense on behalf of Sprint, AT&T,
`
`and T-Mobile, and the terms and nature of Petitioner’s control of the litigation
`
`defense of the respective district court proceedings on behalf of Sprint, AT&T, and
`
`T-Mobile.
`
`B.
`
`Patent Owner’s Discovery Requests Do Not Seek Litigation
`Positions and Underlying Factual Basis
`
`Pursuant to Section 315(b) and 37 C.F.R. § 42.101(b), Patent Owner’s
`
`requested discovery seeks additional information regarding Petitioner’s privity
`
`relationships with its customers, Sprint, AT&T, and T-Mobile. The discovery
`
`11
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`
`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`requests set forth in Exhibit 2118 plainly do not seek Petitioner’s litigation
`
`strategy, contentions, or the underlying basis therefor. Patent Owner also does not
`
`seek to prematurely learn any of Petitioner’s positions in this IPR proceeding.
`
`C.
`
`Patent Owner Has No Ability to Generate Equivalent Information
`By Other Means
`
`Patent Owner’s requested discovery regarding privity and the time bar under
`
`Section 315(b) cannot be obtained in the District Court. As discussed in detail
`
`above, Judge Andrews of the District Court of Delaware has ruled that discovery
`
`regarding the issue of privity between each of Sprint, AT&T, and T-Mobile should
`
`not be sought in the District Court, but rather the appropriate forum for such
`
`discovery is the IPR proceeding. See Ex. 2119 at 26 (“When they filed the second
`
`IPR, that’s a question for the PTAB. I don’t really think that’s a legitimate purpose
`
`to be getting discovery in this case.”). Additionally, the discovery requested in
`
`Exhibit 2118 is confidential and not publicly available.
`
`Moreover, even if certain documents have been produced by Petitioner’s
`
`customers, Sprint, AT&T, and T-Mobile in the respective district court
`
`proceedings, the document production in the district court proceedings is subject to
`
`the governing Protective Order, which precludes Patent Owner from using
`
`confidential information produced in the district court proceedings for the purposes
`
`of any other proceeding, including this IPR proceeding. See Ex. 2121 at 20, ¶5.A
`
`(“All Protected Information shall be held in confidence by each person to whom it
`
`12
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`
`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`is disclosed, shall be used only for the purposes of this litigation, shall not be used
`
`for any business purpose or in connection with any other legal proceeding, and
`
`shall not be disclosed to any person who is not entitled to receive such information
`
`as herein provided.”). Accordingly, Patent Owner has no ability to generate
`
`equivalent information by any other means.
`
`Patent Owner’s Instructions Are Easily Understandable
`
`D.
`Patent Owner’s instructions set forth in Exhibit 2118 are easily
`
`understandable and are based on the instructions already approved by the Board in
`
`Garmin. IPR2012-00001, Paper 26 at 14.
`
`E.
`
`Patent Owner’s Discovery Requests Are Not Overly Burdensome
`to Answer
`
`Patent Owner’s discovery requests are targeted and specific to the
`
`contractual indemnitor-indemnitee relationship between Petitioner and each of its
`
`customers, Sprint, AT&T, and T-Mobile. As explained in detail above, requests
`
`for production Nos. 1, 3, and 5 only seek the specific license and services
`
`agreements containing the relevant indemnification provisions concerning the
`
`district court proceedings: the “Master Services Agreement” between Petitioner
`
`and Sprint, the “License and Services Agreement” between Petitioner and AT&T,
`
`and the “License and Services Agreement” between Petitioner and T-Mobile.
`
`Requests for production Nos. 2, 4, and 6 seek the communications by and between
`
`Petitioner and its customers, Sprint, AT&T, and T-Mobile relating to the particular
`
`13
`
`
`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`indemnification agreements. Request for production No. 7 only seeks the joint
`
`defense and/or common interest agreements entered into by and between Petitioner
`
`and Sprint, AT&T, and/or T-Mobile relating to the district court proceedings.
`
`Finally, request for production No. 8 only seeks the engagement and/or retainer
`
`agreements between the law firm Dentons and Petitioner regarding legal
`
`representation of Sprint, AT&T, and/or T-Mobile in the district court proceedings.
`
`Any financial, human resource, or time burden on Petitioner should be
`
`negligible—particularly since Petitioner and its customers, Sprint, AT&T, and T-
`
`Mobile are all represented by counsel from the same law firm, and Petitioner has
`
`acknowledged that many relevant documents have already been produced in the
`
`district court proceedings. For example, as discussed in detail above, Petitioner
`
`has already identified the indemnification agreements it has with each of Sprint,
`
`AT&T, and T-Mobile by Bates number in the respective district court proceedings.
`
`IV. CONCLUSION
`For the foregoing reasons, each of the five Garmin factors weighs in favor of
`
`granting Patent Owner’s requested additional discovery. Accordingly, Patent
`
`Owner respectfully requests that the Board allow the discovery requests set forth in
`
`Exhibit 2118.
`
`
`
`
`
`14
`
`
`
`Dated: January 7, 2015
`
`
`
`
`
`
`
`
`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`15
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`I hereby certify that on this 7th day of January, 2015, a true and correct copy
`
`
`
`of the foregoing PATENT OWNER’S MOTION FOR ADDITIONAL
`
`DISCOVERY was served on the following counsel for Petitioner Wavemarket,
`
`Inc. d/b/a Location Labs via email:
`
`
`
`
`
`Mark L. Hogge
`Scott W. Cummings
`Dentons US LLP
`1301 K Street, N.W., Suite 600
`Washington DC 20005
`Tel: (202)408-6400
`Fax: (202)408-6399
`
`Dated: January 7, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`mark.hogge@dentons.com
`scott.cummings@dentons.com
`
`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`
`
`16
`
`
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