UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`CALLWAVE COMMUNICATIONS, LLC
`Patent Owner
`
`_____________________
`
`Case IPR2014-00920
`Patent 6,771,970
`_____________________
`
`Petitioner’s Opposition to Patent Owner's Motion for Additional Discovery
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`CALLWAVE COMMUNICATIONS, LLC
`Patent Owner
`
`_____________________
`
`Case IPR2014-00920
`Patent 6,771,970
`_____________________
`
`Petitioner’s Opposition to Patent Owner's Motion for Additional Discovery
`
`
`
`I.
`
`II.
`
`III.
`
`TABLE OF CONTENTS
`FACTUAL BACKGROUND .......................................................................1
`
`THE PATENT OWNER BEARS THE BURDEN OF ESTABLISHING
`THAT THE REQUESTED DISCOVERY IS "NECESSARY IN THE
`INTEREST OF JUSTICE"............................................................................2
`
`PATENT OWNER'S MOTION FAILS BECAUSE IT RELIES ON
`ARGUMENTS THAT ARE INCONSISTENT WITH THE LAW OF
`PRIVITY ......................................................................................................3
`
`IV. GARMIN FACTORS STRONGLY WEIGH AGAINST A FINDING
`THAT ADDITIONAL DISCOVERY IS IN THE INTEREST OF
`JUSTICE ......................................................................................................7
`
`A.
`
`The Patent Owner Offers Nothing More Than Speculation That
`Something Useful Will be Found........................................................7
`The Ability to Obtain the Information by Other Means.....................10
`B.
`The Requested Discovery Is Overly Burdensome .............................11
`C.
`PATENT OWNER'S REPEATED LACK OF DILIGENCE AND
`OTHER FACTORS WEIGH AGAINST GRANTING THE MOTION......14
`
`V.
`
`VI. CONCLUSION ..........................................................................................15
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`ABB Tech. Ltd. v. IPCO, LLP,
`IPR2013-00482, Paper No. 8 .............................................................................3
`
`Apple v. Achates Reference Publ., Inc.,
`IPR2013-00080, Paper No. 18 .......................................................................2,4
`
`Asahi Glass Co. v. Toledo Engineering Co.,
`505 F. Supp. 2d 423 (N.D. Ohio 2007) ..............................................................6
`
`Benson and Ford, Inc. v. Wanda Petroleum Co.,
`833 F.2d 1172 (5th Cir. 1987)..............................................................4, 5, 9, 10
`
`Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, IPR2013-00601
`IPR2013-00601, Paper No. 23 ................................................................5,7,9,15
`
`Bros, Inc. v. W.E. Grace Mfg. Co.,
`261 F.2d 428 (5th Cir. 1958)..........................................................................5, 6
`
`Chi Mei Innolux Corp. v. Semiconductor Energy Laboratory Co. Ltd.,
`IPR2013-00028, Paper No. 14 ..........................................................................3
`
`Garmin Int'l Inc. v. Cuozzo Speed Techs LLC
`IPR2012-00001, Paper No. 26 ......................................................................2, 7
`
`Gonzalez v. Banco Cent. Corp.,
`27 F.3d 751 (1st Cir. 1994) ................................................................................6
`
`Rowe v. FDIC Corp.,
`968 F.Supp. 284 (D. Md. 1997) .........................................................................6
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00042, Paper No. 60 ......................................................................3, 4
`
`Taylor v. Sturgell,
`553 U.S. 800 (2008).....................................................................................4,6,7
`
`ii
`
`
`
`Statutes
`35 U.S.C. § 315(b)........................................................................................1, 3, 14
`
`35 U.S.C. § 316(a)(5)..............................................................................................2
`
`Other Authorities
`
`37 C.F.R. § 42.51(b)(2)...........................................................................................2
`
`154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008)...............................................2
`
`77 Fed. Reg. at 48760 ..........................................................................................4,9
`
`77 Fed. Reg. 48680, 48695 ..................................................................................14
`
`77 Fed. Reg. at 48760 .............................................................................................9
`
`Model Order Regarding E-Discovery, 77 Fed. Reg. at 48771-772 ........................13
`
`iii
`
`
`
`Patent Owner's Motion for Additional Discovery filed January 7, 2015
`
`("Motion") should be denied because Patent Owner ("PO")has not met its burden
`
`as the movant to demonstrate that the requested discovery is in the interest of
`
`justice. PO fails to offer any evidence, beyond mere speculation, that any of the
`
`requested discovery could be useful to prove that the carriers (AT&T, Sprint and
`
`T-Mobile) are privies of Petitioner. PO's deliberate delay in seeking discovery on
`
`the issue of privity also weighs against granting the Motion.
`
`I.
`
`FACTUAL BACKGROUND
`In December 2012, PO filed a number of lawsuits in District Court alleging,
`
`inter alia, infringement of US 6,771,970 ("the '970 patent") ("Litigation"). The
`
`pending litigation names, inter alia, AT&T, T-Mobile and Sprint as defendants
`
`("Defendants"). To date, the Petitioner (Wavemarket d/b/a Location Labs, Inc.)
`
`has not been named as a defendant or served with a complaint for infringement in
`
`connection with the '970 patent. The Petition in this case identifies the real party-
`
`in interest, Location Labs, Inc., and affirmatively states on the record that "no
`
`party exercised control or could exercise control over Location Labs' participation
`
`in this proceeding, the filing of this petition, or the conduct of any ensuing trial."
`
`PO does not contest that Location Labs is the real party-in-interest. Instead, PO
`
`alleges that the Petition is time-barred under 35 U.S.C. § 315(b) because privies of
`
`the Petitioner were served with a complaint for infringement of the '970 Patent
`
`1
`
`
`
`more than one year before the filing date of the petition. PO incorrectly alleges
`
`that the requested discovery will demonstrate this relationship.
`
`PO's Motion contains no unambiguous assertions of material facts.
`
`Statements made by PO in section II of the Motion are argumentative and do not
`
`constitute "statements of material fact." Moreover, Petitioner disputes the
`
`statements made therein, for at least the reasons to be explained below.
`
`II.
`
`THE PATENT OWNER BEARS THE BURDEN OF ESTABLISHING
`THAT THE REQUESTED DISCOVERY IS "NECESSARY IN THE
`INTEREST OF JUSTICE"
`The additional discovery sought by PO should only be permitted where such
`
`discovery is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5); 37 C.F.R.
`
`§ 42.51(b)(2); Apple v. Achates Reference Publ., Inc., IPR2013-00080, Paper No.
`
`18, p. 3. The Board must therefore be “conservative in its grants of discovery.”
`
`154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl). The
`
`Board has previously explained in Garmin Int'l Inc. v. Cuozzo Speed Techs LLC
`
`that a number of factors, discussed in further detail infra, inform the analysis of
`
`whether the party requesting discovery has satisfied its burden. The burden of
`
`establishing the above-mentioned standard justifying additional discovery lies with
`
`the party requesting the discovery. IPR2012-00001, Paper No. 26, pp. 6-7.
`
`2
`
`
`
`III. PATENT OWNER'S MOTION FAILS BECAUSE IT RELIES ON
`ARGUMENTS THAT ARE INCONSISTENT WITH THE LAW OF
`PRIVITY
`Section 315(b) prohibits institution of inter partes review if the petition
`
`requesting the proceeding is filed "more than 1 year after the date on which the
`
`petitioner, real party in interest, or privy of the petitioner is served with a
`
`complaint alleging infringement of the patent." 33 U.S.C. § 315(b) (emphasis
`
`added). As recognized in the Decision on Institution in this trial (Paper No. 11,
`
`p.8), "Patent Owner does not provide evidence sufficient to demonstrate that
`
`Petitioner, at the time of service of the complaints, exercised control or could have
`
`exercised control over the proceedings . . ." The Board has consistently interpreted
`
`the statute to mean that a privity relationship between a petitioner and its privy
`
`must exist at the time the alleged privy is served with a complaint in order for the
`
`prohibition under § 315(b) to apply. Synopsys, Inc. v. Mentor Graphics Corp.,
`
`IPR2012-00042, Paper No. 60, p. 13 ("Mentor Graphics has not alleged that
`
`Synopsys was a privy of EVE in 2006 when EVE was served with a complaint
`
`alleging infringement of the '376 patent"); Chi Mei Innolux Corp. v. Semiconductor
`
`Energy Laboratory Co. Ltd., IPR2013-00028, Paper No. 14, p.6 ("SEL does not
`
`provide persuasive evidence or explanation establishing that CMO (or Innolux)
`
`was a privy of the (eventual) Petitioner CMI on the date of service of the
`
`complaint."); ABB Tech. Ltd. v. IPCO, LLP, IPR2013-00482, Paper No. 8, p.9
`
`3
`
`
`
`("Patent Owner has not shown persuasively that Petitioner was a privy of Tropos
`
`in 2006 when Tropos was served with a complaint alleging infringement of the
`
`'062 patent.").
`
`PO cites the abovementioned Synopsys decision and mischaracterizes it as
`
`"holding that privity relationships up until the time a petition is filed are relevant."
`
`Motion, p.1. The actual holding is that there was no privity due, at least in part, to
`
`a lack of any showing that privity existed at the time service of the complaint for
`
`patent infringement. Synopsys, paper No. 60, p.13. A copy of the Synopsys
`
`decision is attached as Exhibit 1117 for the convenience of the Board.
`
`PO's Motion also fails to address the requisite degree of control by a
`
`nonparty in order to establish privity. As noted by the Supreme Court in Taylor v.
`
`Sturgell, binding a non-party to the outcome of a particular proceeding, such as
`
`through the application of collateral estoppel, "runs up against the 'deep-rooted
`
`historic tradition that everyone should have his own day in court.'" Taylor v.
`
`Sturgell, 553 U.S. 800, 892-93 (2008) (quoting Richards v. Jefferson Cnty., 517
`
`U.S. 793, 798 (1996)). Thus, both the Board and the Courts have rightfully been
`
`conservative in the application of the concept of privity.
`
`In this regard, participation in joint defense groups (Trial Practice Guide, 77
`
`Fed. Reg. at 48760), indemnification obligations (IPR2013-00080, Paper 18, pp. 5-
`
`6), or sharing of counsel (Benson and Ford, Inc. v. Wanda Petroleum Co., 833
`
`4
`
`
`
`F.2d 1172, 1174 (5th Cir. 1987)), do not establish privity. Something more is
`
`required, yet PO's proffered "evidence" falls short of the mark. The facts presented
`
`here are very similar to those presented in Broadcom Corp. v. Telefonaktiebolaget
`
`LM Ericsson, IPR2013-006011. As the Board determined in Broadcom, there is
`
`vast authority establishing that in order to be bound or estopped, the nonparty must
`
`have exercised extensive control over the prior proceeding, or at least had the
`
`opportunity to do so. IPR2013-00601, Paper No. 23, pp. 7-10 (Exhibit 1118)2.
`
`For example, Bros, Inc. v. W.E. Grace Mfg. Co., 261 F.2d 428 (5th Cir.
`
`1958), relied upon by the Board in Broadcom, restates familiar principles with
`
`regard to the extent of control needed to bind a nonparty. Namely, that payment of
`
`counsel's fees or participation at trial alone are insufficient. Rather, it must be
`
`shown that the nonparty gave "the case full and active defense as though the
`
`[nonparty] were the real named party." Id. at 430 (emphasis added).
`
`Bros cites abundant authority in support of the above proposition. Id., at
`
`430-31. This principle has been consistently recognized and applied by the federal
`1 There are three related proceedings, each involving the same issues of privity:
`IPR2013-00601, '00602 and '00636. Only IPR2013-00601 is referenced herein.
`2 The Board's decision could be read such that a showing of actual control is
`necessary in order to establish privity. See, Benson and Ford, Inc. v. Wanda
`Petroleum Co., 833 F.2d 1172, 1175 (5th Cir. 1987) ("Absent evidence that Ford
`directly exercised some actual control over Shelby's cause of action . . . the control
`theory cannot apply.").
`
`5
`
`
`
`courts. See, e.g., Gonzalez v. Banco Cent. Corp., 27 F.3d 751, 758 (1st Cir. 1994)
`
`(holding that a showing of "substantial control" is required to apply principles of
`
`res judicata, and that "[s]ubstantial control means . . . what one might term, in the
`
`vernacular, the power – whether exercised or not – to call the shots"; emphasis
`
`added, citations omitted); Rowe v. FDIC Corp., 968 F.Supp. 284 (D. Md. 1997)
`
`(applying the principle that "nonparty control for purposes of res judicata must be
`
`extensive" in refusing to find privity between a mother and son; emphasis added).
`
`PO relies on Asahi Glass Co. v. Toledo Engineering Co., 505 F. Supp. 2d
`
`423 (N.D. Ohio 2007) in support of its arguments. However, the holding in that
`
`case is questionable because that court's finding of privity relied, at least in part, on
`
`a finding that the participating party served as the nonparty's "virtual
`
`representative." Id. at 435 ("Schott served as TECO's 'virtual representative'
`
`during the arbitration"). However, the Supreme Court expressly rejected the
`
`"virtual representation" theory in Taylor v. Surgell. 525 U.S. at 885 ("We
`
`disapprove the doctrine of preclusion by "virtual representation").
`
`PO offers no legitimate basis for the proposition that the contents of the
`
`requested discovery will be useful to establish the aforementioned requisite degree
`
`of substantial or extensive control.
`
`6
`
`
`
`IV. GARMIN FACTORS STRONGLY WEIGH AGAINST A FINDING
`THAT ADDITIONAL DISCOVERY IS IN THE INTEREST OF
`JUSTICE
`The Patent Owner Offers Nothing More Than Speculation That
`A.
`Something Useful Will be Found
`In order to establish that it is entitled to the requested discovery, PO must
`
`demonstrate that it is already in possession of "a threshold amount of evidence or
`
`reasoning tending to show beyond speculation that something useful will be
`
`uncovered." IPR 2012-00001, Paper Number 26, p.7. It is noted that the term
`
`"useful" goes beyond traditional district court litigation thresholds of relevance and
`
`admissibility. Id. In particular, PO has the burden of demonstrating that the
`
`requested discovery is "favorable in substantive value to a contention of the party
`
`moving for discovery." Id.
`
`PO alleges that indemnification agreements between Petitioner and
`
`Defendants are relevant to the issue of privity, yet it fails to explain how such
`
`"evidence" would demonstrate that the indemnification agreements would establish
`
`Petitioner's actual control, or the power to control, as of the service date. Similarly,
`
`PO fails to offer any evidence or explanation as to how the requested agreements
`
`would establish the necessary extent of control (i.e., extensive or substantial
`
`control, "the ability to call the shots"). Indemnification is insufficient to establish
`
`privity. IPR2013-00601, Paper Number 23, p. 7 (Exhibit 1118). For at least the
`
`above-noted reasons, PO has failed to meet its obligation to demonstrate that
`
`7
`
`
`
`Request Nos. 1, 3 and 5 will be useful to establish privity between Petitioner and
`
`Defendants.
`
`PO's discovery Request Nos. 2, 4 and 6 request production of
`
`communications relating to any indemnification demand on Petitioner, Petitioner's
`
`response to such demands, and Petitioner's acceptance of litigation defense. Logic
`
`would dictate that the requested communications would occur after
`
`commencement of the Litigation. Thus, PO fails to offer any explanation, much
`
`less any evidence, to show that the requested documents could be useful to
`
`establish privity between Petitioner and Defendants as of the date of service.
`
`Similarly, PO fails to offer any explanation or evidence to show that the requested
`
`documents could be useful to demonstrate the nature and extent of control
`
`necessary to support a finding of privity between Petitioner and Defendants.
`
`PO cites attendance of Petitioner's Vice President of Finance at a settlement
`
`conference, and an appearance in District Court in Delaware on September 16,
`
`2014 by Mr. Ruthenberg of Dentons on behalf of Defendants, in support of its
`
`Request Nos. 2, 4 and 6. Motion, p. 8. However, neither are probative to the
`
`question of privity at the time of service. In addition, attendance of a settlement
`
`conference or appearance at a hearing are in no way indicative of substantial or
`
`extensive control over the proceedings (i.e., "the power to call the shots").
`
`8
`
`
`
`IPR2013-00601, Paper Number 23, p. 7; Benson and Ford, 833 F.2d at 1174. The
`
`proffered "evidence" amounts to nothing more than speculation.
`
`PO seeks joint defense and/or common interest agreements between
`
`Petitioner and Defendants in Request No. 7. Logic would dictate that any such
`
`agreements would have been formed after commencement of the litigation. In this
`
`regard, PO offers no explanation, much less any evidence, that would demonstrate
`
`how these agreements support a finding of privity as of the date of service. The
`
`existence of, or participation in, a joint defense group does not necessarily mean
`
`that the members of the group are privies. 77 Fed. Reg. at 48760 ("If Party A is
`
`part of a Joint Defense Group with Party B in a patent infringement suit . . . Party
`
`A is not a . . . 'privy' . . . based solely on its participation in that Group.").
`
`Furthermore, PO acknowledges that the requested agreements are most likely
`
`privileged, and will not be produced. Motion, p. 10. PO then incorrectly asserts
`
`that listing of such documents on a privilege log "will assist the Board in
`
`determining that a privity relationship exists between Petitioner and each of its
`
`indemnitees." Id. The listing of any such documents on a privilege log does
`
`nothing to inform the Board with respect to whether a privity relationship existed
`
`as of the date of service, or whether Petitioner exercised, or had the power to
`
`exercise, extensive or substantial control (i.e., "the power to call the shots") over
`
`9
`
`
`
`the Litigation. PO fails to demonstrate that Request No. 7 is useful to demonstrate
`
`privity.
`
`PO points to common counsel between Defendants and Petitioner as
`
`"evidence" of privity. However, PO admits that Dentons did not enter an
`
`appearance in the Litigation until months after any of the Defendants were
`
`served with a complaint alleging infringement of the '970 Patent. Motion, pp. 10-
`
`11. Therefore, PO's shared counsel argument is unavailing because it fails to
`
`demonstrate privity between Petitioner and the Defendants at the time of service.
`
`Moreover, the fact that counsel was shared between proceedings is per se
`
`inadequate to demonstrate the existence of privity. Benson and Ford, 833 F.2d at
`
`1174.
`
`The Ability to Obtain the Information by Other Means
`B.
`PO has already obtained at least those documents containing the requested
`
`indemnification provisions between Petitioner and Defendants during the course of
`
`discovery in the Litigation. However, PO asserts that the terms of the Protective
`
`Order (Exhibit 2121) prohibits use of these documents in the current IPR. PO
`
`complains that Petitioner previously argued to the Board in IPR2014-00199
`
`(Opposition to Motion for Discovery of July 28, 2014, Paper No. 33) that the
`
`indemnification agreements had been produced in the Litigation "knowing full well
`
`that the Protective Order in the district court proceedings precluded Patent Owner
`
`10
`
`
`
`from providing the Board the indemnification agreements . . ." Motion, p. 4. PO's
`
`allegation is false. The Protective Order was not entered in the Litigation until
`
`August 4, 2014 (Exhibit 2121), and counsel for Petitioner was not aware of the
`
`provisions of the Protective Order, or how the produced documents would be
`
`treated thereunder, at the time those arguments were made (June-July 2014).
`
`The Requested Discovery Is Overly Burdensome
`C.
`In the Board's Order authorizing PO's Motion for Additional Discovery, the
`
`Board cautioned PO that any requested discovery should be "targeted and specific
`
`(e.g., particular agreements, communications related to particular agreements) . . .
`
`[w]e will not grant a motion that casts too wide a net," and "[i]t is strongly
`
`suggested that Patent Owner consider the scope of its request . . . [w]ide ranging
`
`discovery requests are not likely to be granted." Paper No. 14, p. 3. For the
`
`reasons explained below, it is clear that the Board's advice has gone unheeded.
`
`Request Nos. 1-8 are all overly broad because they are clearly not limited to
`
`issues related solely to this proceeding, i.e., the '970 patent. For example,
`
`"Delaware Litigation" involves multiple patents not involved in this trial. PO does
`
`not explain how its requests for communications and other information associated
`
`with indemnification for allegations of infringement of patents other than the '970
`
`patent, that are encompassed by its requests, are justified. Thus, the scope of the
`
`requests are not narrowly tailored and should be denied.
`
`11
`
`
`
`Request Nos. 2, 4 and 6 are overly broad. PO ignored the advice of the
`
`Board to limit such requests to "communications related to particular agreements."
`
`Order, Paper No. 14, p. 3. These requests are not limited to any particular
`
`agreements. These requests are directed to communications of "Petitioner" and the
`
`Defendants. The Definitions accompanying the requested discovery defines
`
`"Petitioner" and the Defendants broadly so as to include "agents, employees,
`
`representatives, directors, officers, or any other person or entity acting on behalf of
`
`the foregoing." Exhibit 2118, Definitions 1-4. Therefore, these requests can be
`
`construed as encompassing privileged attorney-client communications. Moreover,
`
`these requests encompass communications "by and between" Petitioner and
`
`Defendants. Thus, these requests could be construed as encompassing not only
`
`communications between Petitioner and Defendants, but also communications of
`
`either Petitioner or Defendant. Thus, these requests could also intrude upon the
`
`attorney work product privilege, and potentially intrude into Defendant's litigation
`
`positions (e.g., a memorandum of law relating to indemnification authored by
`
`attorneys for either Petitioner or Defendants). Response to the requests would
`
`most likely necessitate preparation of a privilege log. Also, "communications" is
`
`defined broadly to encompass not only e-mail, but any "telecommunication
`
`whether oral or visual." Exhibit 2118, Definition 7. Given the large group of
`
`people encompassed by the overly broad definitions of Petitioner and Defendants,
`
`12
`
`
`
`and the overly broad types of different communications sought, the extent of
`
`electronic discovery necessary to respond to these requests would be expensive,
`
`time-consuming and unjustified for the reasons explained herein. The PO's
`
`requests are not in compliance with the Board's Model Order Regarding E-
`
`Discovery, 77 Fed. Reg. at 48771-772. The burden associated with complying
`
`with this request is substantial, and far outweighs the usefulness of any information
`
`that may be obtained by PO's unfocused fishing expedition.
`
`Document Request 7 asks for all joint defense and common interest
`
`agreements relating to the Litigation. As acknowledge by PO, these agreements
`
`will in all likelihood not be produced based on privilege under the common interest
`
`doctrine, and thus are not discoverable. Moreover, producing a privilege log that
`
`merely lists these agreements provides no relevant information to the Board that
`
`will assist in addressing the question of privity. Therefore, the burden associated
`
`with complying with this request is completely unjustified.
`
`Similarly, as previously explained, no basis exists in the Motion to establish
`
`that the intrusion into the attorney-client relationship and business dealings of both
`
`Dentons and Petitioner sought in Request No. 8 (engagement and retainer
`
`agreements between Dentons and Petitioner) will bear fruit to justify the request.
`
`13
`
`
`
`V.
`
`PATENT OWNER'S REPEATED LACK OF DILIGENCE AND
`OTHER FACTORS WEIGH AGAINST GRANTING THE MOTION
`PO should have sought this discovery before its Preliminary Response. 77
`
`Fed. Reg. 48680, 48695 (8/14/2012) ("The Office agrees with the comments that
`
`such a challenge should be brought before or with the filing of the patent owner
`
`preliminary response. During that period, the patent owner may seek
`
`authorization to take pertinent discovery. After the patent owner preliminary
`
`response, the likelihood of granting an authorization for additional discovery
`
`related to the challenge before institution will decrease . . . "; emphasis added).
`
`These proceedings are clearly designed to consider challenges under § 315(b) as
`
`part of the decision to institute trial so as not to hinder the Board's ability to
`
`conduct these proceedings within the tight time frame required by statute. PO has
`
`now repeated its pattern of delay twice; the first time in IPR2014-00199, and again
`
`in this proceeding. It is unfair to Petitioner to be forced to continue to litigate the
`
`issue of privity and § 315(b) throughout the entire trial, and the Board's ability to
`
`conduct these proceedings in a timely an efficient manner is also negatively
`
`impacted. This deliberate and repeated pattern of delay by PO weighs heavily
`
`against granting the Motion.
`
`As explained above, a critical aspect of rendering a determination as to
`
`whether a relationship of privity existed between Petitioner and Defendants in this
`
`case involves a determination of the extent of control by the nonparty (in this case
`
`14
`
`
`
`Petitioner). As the Board aptly observed in Broadcom: "determining whether
`
`privity exists . . . typically spirals into what amounts to a separate trial that
`
`involves a myriad of considerations. This impacts the PTAB's mandate to expedite
`
`proceedings and provide limited discovery in the interest of justice." Exhibit 1118,
`
`IPR2013-00601, Paper No. 23, p. 15.
`
`VI.
`
`CONCLUSION
`For at least the reasons set forth herein, Patent Owner's Motion should be
`
`denied.
`
`Dated: January 16, 2015
`
`Respectfully submitted,
`Attorneys for Petitioner
`Dentons US LLP
`
`By:
`
`/Scott W. Cummings /
`
`Mark L. Hogge, Reg. No. 31,662
`Email: mark.hogge@dentons.com
`
`Scott W. Cummings, Reg. No. 41, 567
`Email: scott.cummings@dentons.com
`
`15
`
`
`
`EXHIBIT NO.
`1101
`1102
`1103
`1104
`
`1105
`1106
`1107
`1108
`1109
`1110
`1111
`1112
`1113
`
`1114
`
`1115
`
`1116
`
`APPENDIX 1 - LIST OF EXHIBITS
`
`DESCRIPTION
`U.S. Patent No. 6,771,970
`U.S. Provisional Appln. No. 60/157,643
`Patent Owner's Preliminary Resp. filed March 17, 2014, pp. 2-5
`Decision - Institution of Inter Partes Review - 37 C.F.R.
`§42.108" dated May 9, 2014
`U.S. Patent No. 6,321,092
`U.S. Provisional Appln. No. 60/106,816
`U.S. Patent No. 6,002,936
`U.S. Patent No. 6,741,927
`U.S. Patent No. 5,758,313
`U.S. Patent No.6,243,039
`File History of U.S. Patent No. 6,771,970
`FAA Historical Chronology 1926-1996
`R. L. French & Associates, "A Comparison of IVHS Progress in
`the United States, Europe, and Japan," December 31, 1993.
`R.L. French, "The Evolving Roles of Vehicular Navigation,"
`1987.
`Ericsson Review, No. 4, 1999 - The Telecommunications
`Technology Journal -- "Ericsson's Mobile Location Solution"
`Declaration of Scott Hotes, Ph.D.
`
`A-1
`
`
`
`1117
`
`1118
`
`NEWLY CITED EXHIBITS FOLLOW
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00042, Paper No. 60
`Broadcom Corp. v. Telefonaktiebolaget LM Ericsson,
`IPR2013-00601, Paper No. 23
`
`A-2
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`The undersigned hereby certifies that the foregoing Petitioner’s Opposition
`
`to Patent Owner's Motion for Additional Discovery along with Exhibits 1117-
`
`1118 were served by electronic mail, in their entirety, on the following Attorneys
`
`of record in IPR2014-00920.
`
`Thomas Engellenner
`
`Reza Mollaaghababa
`
`Pepper Hamilton LLP
`
`125 High Street
`
`Andy Chan
`
`Pepper Hamilton LLP
`
`333 Twin Dolphin Dr.
`
`Suite 400
`
`19th Floor, High Street Tower
`
`Redwood City, CA 94065
`
`Boston, MA 02110
`
`chana@pepperlaw.com
`
`engellennert@pepperlaw.com
`
`mollaaghababar@pepperlaw.com
`
`Dated: January 16, 2015
`
`By: /Nona Durham/
`Nona Durham
`
`
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