`571-272-7822
`
`
`
`
`
` Paper No. 14
` December 30, 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, GLENN J. PERRY, and
`SHERIDAN K. SNEDDEN, 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 December 24, 2014 among respective counsel for
`Petitioner and Patent Owner, and Judges Droesch, Snedden, and Perry.
`Patent Owner seeks authorization to file a motion for additional discovery
`pursuant to 37 C.F.R. §42.51(b)(2).
`The additional discovery sought relates to potential privies.
`According to Patent Owner’s counsel, Petitioner Location Labs is an
`indemnitor of AT&T, T-Mobile, and Sprint. Patent Owner alleges that
`documents subject to a protective order in the related District Court litigation
`establish that privity exists between Petitioner Location Labs and at least one
`of its customers (AT&T, T-Mobile, and Sprint) accused of infringement.
`During a previous conference call involving this issue in IPR2014-
`00199, Petitioner’s counsel argued to us that the appropriate forum for the
`discovery requested by Patent Owner is the District Court. We are now told
`that the District Court judge has denied discovery on this issue stating that
`the appropriate forum for this discovery is the Patent Trial and Appeal
`Board.
`In view of the facts disclosed during the conference call, and the
`potential significance of a bar under 35 U.S.C. § 315(b) based on privity,
`Patent Owner is authorized to file a motion within the next 10 days for
`additional discovery related to the potential privy relationships. Petitioner
`may oppose in accordance with our rules within 10 days after the motion is
`filed.
`
`This authorization does not mean that any such motion will be
`granted. Patent Owner is cautioned that such motions are only granted if
`
`
`
`2
`
`
`
`Case IPR2014-00920
`Patent 6,771,970
`
`they are targeted and specific (e.g., particular agreements, communications
`related to particular agreements). We will not grant a motion that casts too
`wide a net. We consider various factors in determining whether requested
`additional discovery meets the standard of “necessary in the interest of
`justice” under 35 U.S.C. § 316(a)(5), including the following factors set
`forth in Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC, Case
`IPR2012-00001 slip. op. at 6-7 (PTAB Mar. 5, 2013) (Paper No. 26): (1)
`the request is based on more than a mere possibility of finding something
`useful; (2) the request does not seek the litigation positions of the other
`party; (3) the information is not reasonably available through other means;
`(4) the request is easily understandable; and (5) the request is not overly
`burdensome to answer.
`It is strongly suggested that Patent Owner consider the scope of its
`request. Wide-ranging discovery requests are not likely to be granted.
`
`ORDER
`
`Accordingly, it is hereby
`ORDERED that Patent Owner’s request for authorization to file a
`motion for additional discovery is granted.
`
`
`
`
`
`3
`
`
`
`Case IPR2014-00920
`Patent 6,771,970
`
`For Petitioner:
`Mark L. Hogge
`Scott W. Cummings
`DENTONS US LLP
`mark.hogge@dentons.com
`scott.cummings@dentons.com
`
`For Patent Owner:
`
`Thomas Engellenner
`Reza Mollaaghababa
`Andy Chan
`PEPPER HAMILTON LLP
`
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
`chana@pepperlaw.com
`
`
`
`4
`
`
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