UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`____________
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`DR. MICHAEL FARMWALD
`and
`RPX CORPORATION
`Petitioners,
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`v.
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`PARKERVISION, INC.,
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`Patent Owner.
`
`____________
`
`Case IPR2014-00948
`
`U.S. Patent No. 6,370,371
`
`____________
`
`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`____________
`
`DR. MICHAEL FARMWALD
`and
`RPX CORPORATION
`Petitioners,
`
`v.
`
`PARKERVISION, INC.,
`
`Patent Owner.
`
`____________
`
`Case IPR2014-00948
`
`U.S. Patent No. 6,370,371
`
`____________
`
`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
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`I.
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`Overview
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`Case IPR2014-00948
`U.S. Patent No. 6,370,371
`
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`Patent Owner’s Motion for Additional Discovery (“Motion”) should be
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`denied. The Motion’s application of the Garmin factors -- entirely based on
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`speculation and innuendo -- completely ignores the voluntary testimony of Dr.
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`Michael Farmwald (Ex. 1048) and RPX representative, Jeremy Brodsky (Ex.
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`1049), and the fact that Dr. Farmwald has a long-standing personal and financial
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`interest in debunking what he has characterized as the "outrageously false or
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`stupid" technical claims made by the Patent Owner that pre-dates the Qualcomm
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`litigation by years. (Ex. 1051) For at least these reasons, Patent Owner's
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`Motion fails to meet the interests of justice standard.
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`II. Response to “Factual Background”
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`A. Patent Owner Clings to Mere Speculation
`Patent Owner speculates that “Qualcomm likely is a real-party-in-interest” in
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`view of the following (1)Petitioner’s decision to challenge the same four
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`ParkerVision patents asserted by ParkerVision against Qualcomm in the District
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`Court for Florida; (2) Petitioner’s selection of “Qualcomm’s litigation attorney
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`James Bailey” as IPR counsel; (3) Qualcomm’s “close relationship” with RPX; and
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`(4) the Board’s denial of “several RPX-filed IPRs, finding that RPX acted as proxy
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`for its time-barred client, Apple Inc.” Patent Owners reliance on these “facts” is
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`misleading and prejudicial.
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`1
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`The Patent Owner’s reliance is misleading in light of its failure to address
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`Case IPR2014-00948
`U.S. Patent No. 6,370,371
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`
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`the testimony of Dr. Farmwald and RPX’s representative, Mr. Brodsky, concerning
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`Qualcomm’s lack of funding, control, or direction in any aspect of the related IPR
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`proceedings. See Ex. 1048 ¶¶ (3)–(8) and Ex. 1049 ¶¶ (1)–(8).1 In particular, the
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`Motion ignores the testimony from Mr. Brodsky that Qualcomm is not a member
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`of RPX; that Qualcomm ceased being a member of RPX more than six months
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`prior to RPX’s engagement of IPR counsel; and that RPX is not receiving any
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`compensation from Qualcomm related to these IPRs. Ex. 1048, ¶¶ (2)–(4).
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`
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`The Patent Owner’s reliance is prejudicial as it suggests that the Board’s
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`conclusion in RPX Corp. v. VirnetX2 that “RPX acted as proxy for its time barred
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`client, Apple Inc.” necessarily supports the conclusion that RPX is acting as a
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`proxy for its former client Qualcomm here. The panel assigned to these related
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`IPRs is requested to look at the facts of this matter independent of the Board’s
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`decision in the VirnetX matter. As evidenced by Mr. Brodsky’s declaration, Ex.
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`1048, Qualcomm is not a current client of RPX, and RPX is not “secretively”
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`acting as a proxy for Qualcomm.
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`B. Petitioner’s Engagement of Mr. Bailey is of No Moment
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`1 Exhibits 1048 and 1049 were served on Patent Owner in August 2014 under seal.
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`2 IPR2014-00171, paper 57 (June 23, 2014).
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`2
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`Case IPR2014-00948
`U.S. Patent No. 6,370,371
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`Petitioner’s engagement of Mr. Bailey is of no moment. Mr. Bailey was one
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`of twenty-five (25) counsel of record in the ParkerVision v. Qualcomm litigation.
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`Attorneys from the law firm of Cooley LLP – not Mr. Bailey – actually tried the
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`case. Importantly, any similarity between Qualcomm’s invalidity positions and
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`the positions taken by the Petitioner in the subject IPRs is largely due to
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`Petitioner’s use of portions of the trial record publicly posted on the investor
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`relations portion of Patent Owner’s web site. See, e.g., IPR2014-00946, Paper 1,
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`Footnote 1. As pointed out above, Qualcomm provides no funding, control, or
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`direction in any aspect of the related IPR proceedings. Mr. Bailey’s engagement
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`by Petitioner does not negate that fact. See Denso v. Beacon Navigation, IPR2013-
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`00026, Paper 34, Section III.A (March 14, 2014).
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`III. The Garmin Factors Are Not Satisfied
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`A. Additional Discovery Will Not Uncover Useful Information
`In support of its position that the requested discovery will uncover useful
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`
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`information, the Motion restates the “facts” from “Factual Background”.
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`Petitioner disputes that those “facts” should be outcome determinative for the
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`reasons provided above.
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`
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`Patent Owner’s Proposed Discovery Requests to Petitioner (“RFP”), Exhibit
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`2006, is problematic due its lack of clarity and overreaching requests. Consistent
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`with the January 26, 2015 Order, Applicants conferred with Patent Owner counsel
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`3
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`in an attempt to agree on the scope of the RFP. A redlined version of the RFP is
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`Case IPR2014-00948
`U.S. Patent No. 6,370,371
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`submitted herewith as Exhibit 1050 (“redlined RFP”).3 The Patent Owner’s RFP is
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`overreaching for at least the following reasons. Neither RPX nor Dr. Farmwald is
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`a party to the Qualcomm Litigations. Consequently, any requests for documents
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`“concerning … the Qualcomm Litigations” should be denied. Patent Owner’s RFP
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`request No. 3 is directed to documents “reflecting … the deliberations leading to
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`and reasons why” Petitioners prepared and filed the respective petitions for IPR.
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`As such, all of the requested documents are clearly covered by the attorney-client
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`privilege and work-product doctrine and Request No. 3 should be denied. Lastly,
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`the RFP’s definition of “communication” encompasses oral communications which
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`the Board on the January 21, 2015 conference call made very clear should be
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`limited to documents. Ex. 2007 page 31, lines 3-8.
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`
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`Request No. 5 is exemplary of Patent Owner’s over-reaching. The request is
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`in one aspect particularly directed to money received from Qualcomm – which
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`3 Petitioner does not warrant that it is in possession of any documents protected by
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`attorney-client privilege, the work-product doctrine, or otherwise satisfying any of
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`the requests of the redlined RFP. In response to receiving the redlined version of
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`the RFP, Exhibit 1050, Patent Owner annotated that document “to reflect where
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`the parties stand as to the scope of the RFPs.” See Exhibit 1052.
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`4
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`Patent Owner should know from the declarations do not exist – but also asks for
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`Case IPR2014-00948
`U.S. Patent No. 6,370,371
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`what amounts to a full financial audit of RPX and Dr. Farmwald.
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`Petitioner’s Litigation Positions
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`B.
`Petitioner does not have any litigation positions related to the subject IPRs
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`
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`and hence this factor is irrelevant.
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`Farmwald and Brodsky are Available for Cross-examination
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`C.
`Dr. Farmwald and Mr. Brodsky have voluntarily provided statements
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`
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`concerning Qualcomm’s lack of funding, control, or direction in any aspect of the
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`related IPR proceedings. Those statements were made with the knowledge that
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`willful false statements are punishable under 18 USC § 1001. Further, both Dr.
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`Farmwald and Mr. Brodsky are available for cross-examination under oath.
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`Hence, Patent Owner has alternative recourse.
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`D. The Patent Owner’s RFPs Require Clarification
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`Petitioner has proposed clarifying changes to Patent Owner’s RFP. See the
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`redlined RFP, Exhibit 1050.
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`E. The Patent Owner’s RFPs are Overreaching
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`
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`For the reasons discussed in Section III.A, the Patent Owner’s RFP is not
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`narrowly tailored as required by Garmin.
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`In view of the foregoing, Petitioner respectfully requests that the Board deny
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`Patent Owner’s Motion for Additional Discovery.
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`5
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`Case IPR2014-00948
`U.S. Patent No. 6,370,371
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`Respectfully submitted,
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`
`
`
`
`/W. Todd Baker/
`W. Todd Baker
`Reg. No. 45,265
`OBLON
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`/James T. Bailey/_______
`James T. Bailey
`Reg. No. 44,518
`THE LAW OFFICE OF JAMES T.
`BAILEY
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`Dated: February 4, 2015
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`Customer Number
` 22850
`Tel. (703) 413-3000
`Fax. (703) 413-2220
`(OMMN 02/10)
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`6
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`Case IPR2014-00948
`U.S. Patent No. 6,370,371
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
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`PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTION FOR
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`ADDITIONAL DISCOVERY on the counsel of record for the Patent Owner by
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`filing this document through the Patent Review Processing System as well as
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`delivering a copy via electronic mail to the following address:
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`Robert Greene Sterne
`rsterne-PTAB@skgf.com
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`Michael Q. Lee
`mlee-PTAB@skgf.com
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`Byron L. Pickard
`bpickard-PTAB@skgf.com
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`Jason E. Stach
`jason.stach@finnegan.com
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`Rick D. Nydegger
`rnydegger@wnlaw.com
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`/W. Todd Baker/
`W. Todd Baker
`Reg. No. 45,265
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`Dated: February 4, 2015
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`7
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