`571-272-7822
`
`
`
`
`
` Paper No. 10
`Entered: November 25, 2014
`
`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 IPR2014-00920
`Patent 6,771,970
`____________
`
`
`
`Before KRISTEN L. DROESCH, and GLENN J. PERRY,
`Administrative Patent Judges
`
`
`PERRY, Administrative Patent Judge
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`Case IPR2014-00920
`Patent 6,771,970
`
`
`
`
`At the request of Patent Owner, a conference call in the above
`
`proceeding was held on November 20, 2014 among respective counsel for
`
`Petitioner and Patent Owner, and Judges Droesch and Perry. Patent Owner
`
`seeks authorization to file a motion for additional discovery pursuant to
`
`37 C.F.R. §42.51(b)(2). A decision on the Petition (Paper 3) has not yet
`
`been issued and is due to be issued no later than December 19, 2014.
`
`Potential Joinder
`
`Petitioner filed a Motion for Joinder (Paper 4) of this proceeding with
`
`IPR2014-00199 (“the ’199 proceeding”). The panel will decide the joinder
`
`motion either concurrently with its Decision to Institute or soon thereafter.
`
`Patent Owner indicated in the ’199 proceeding that it opposes joinder.
`
`Patent Owner’s Request for Additional Discovery
`
`Patent Owner, per email of November 17, 2014, seeks authorization to
`
`file a motion requesting additional discovery “concerning third parties in
`
`privity with petitioner.” Patent Owner stated that it set forth in its
`
`Preliminary Response (Paper 8) its case that AT&T, T-Mobile and Sprint,
`
`customers of Petitioner Location Labs, are in privity with Petitioner and
`
`were served with a complaint for infringement of the patent at issue more
`
`than one year before the Petition was filed at PTAB, thereby barring the
`
`Petition under 35 U.S.C. § 315(b).
`
`
`
`2
`
`
`
`Case IPR2014-00920
`Patent 6,771,970
`
`
`According to Patent Owner, Petitioner Location Labs is an indemnitor
`
`of AT&T, T-Mobile and Sprint. Petitioner’s Counsel confirmed in the
`
`’199 proceeding that it not only represents Petitioner Location Labs, but also
`
`represents AT&T, T-Mobile and Sprint who are customers of Location Labs.
`
`Patent Owner argued in the ’199 proceeding that AT&T, T-Mobile
`
`and Sprint were real parties in interest that should have been named as such.
`
`Patent Owner filed a Motion for Additional Discovery (IPR2014-00199,
`
`Paper 31) seeking agreements and other evidence establishing that AT&T,
`
`T-Mobile and Sprint are real parties in interest. That motion was opposed
`
`(IPR2014-00199, Paper 33) and denied (IPR2014-00199, Paper 34).
`
`Now, in this proceeding, Patent Owner argues in its Preliminary
`
`Response (Paper 8) that AT&T, T-Mobile and Sprint are in privity with
`
`Petitioner and therefore the Petition, it is barred under 35 U.S.C. § 315(b).
`
`Patent Owner seeks our authorization to file a motion requesting additional
`
`discovery in order to obtain indemnification agreements and other
`
`documents describing the relationship of AT&T, T-Mobile and/or Sprint
`
`with Petitioner.
`
`Patent Owner is late with its request for additional discovery. The
`
`Petition (Paper 3) in this proceeding was filed on June 9, 2014. Patent
`
`Owner filed its Preliminary Response (Paper 8) on September 19, 2014. The
`
`panel will soon be issuing its decision with regard to granting that Petition.
`
`Petitioner correctly noted during the call that even if we authorize Patent
`
`Owner to file a motion seeking the documents which may support a finding
`
`of privity, such documents would not be made available prior to our decision
`
`on the Petition.
`
`
`
`3
`
`
`
`Case IPR2014-00920
`Patent 6,771,970
`
`
`Patent Owner argued its case for privity in its Preliminary Response
`
`(Paper 8). Those arguments are being considered in reaching our decision
`
`with regard to the Petition.
`
`It is not clear to us why Patent Owner did not obtain the sought after
`
`documents in District Court discovery.
`
`
`
`ORDER
`
`Accordingly, it is hereby
`
`ORDERED that Patent Owner request for authorization to file a
`
`motion for additional discovery is denied.
`
`
`
`
`For Petitioner:
`
`Mark L. Hogge
`DENTONS US LLP
`mark.hogge@dentons.com
`
`For Patent Owner:
`
`Thomas Engellenner
`Reza Mollaaghababa
`Andy Chan
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`chana@pepperlaw.com
`
`
`
`
`
`4
`
`
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