Trials@uspto.gov Paper 39
`571-272-7822
` Entered: February 17, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`UNIFIED PATENTS INC,
`Petitioner
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`v.
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`DRAGON INTELLECTUAL PROPERTY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-01252
`Patent 5,930,444
`_______________
`
`Before NEIL T. POWELL, GREGG I. ANDERSON, and
`J. JOHN LEE, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION
`Motion for Additional Discovery
`37 C.F.R. § 42.51
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`IPR2014-01252
`Patent 5,930,444
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`
`Introduction
`I.
`Pursuant to our authorization, Patent Owner filed a Motion for Additional
`Discovery. Papers 24, 29.1 Petitioner filed an Opposition to Patent Owner’s
`Motion for Additional Discovery. Papers 31, 33.2 In its Motion, Patent Owner
`seeks information that it contends relates to the real party-in-interest issue in this
`case. Paper 29, 1. The Motion makes the following four document requests:
`1. Documents sufficient to show the amounts Unified Patents
`paid to acquire United States Patent 7,328,307.
`2. For the year 2014, accounting records sufficient to show the
`amounts Unified spent in connection with preparing to file,
`filing, and prosecuting all inter partes review or other
`proceedings in which Unified challenges the validity of a
`patent. The records should provide at least enough detail to
`enable an understanding of the nature of the expense (i.e.,
`expert witness fees, invalidity search), and the date on which
`the expense was incurred, but should not include any privileged
`information.
`3. Accounting records sufficient to show the amounts Unified
`spent in preparing to file, filing, and prosecuting IPR2014-
`01252 (this proceeding). The records should provide at least
`enough detail to enable an understanding of the nature of the
`expense (i.e., expert witness fees, invalidity search), and the
`date on which the expense was incurred, but should not include
`any privileged information.
`4. If Unified contends it incurs expenses in connection with
`activities unrelated to challenging patents in inter partes review
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`1 Patent Owner filed two versions of its Motion. Paper 24 is an unredacted,
`confidential version of the Motion. Paper 29 is a redacted, public version of the
`Motion. In this Decision, we cite to the public version (Paper 29). The Motion
`currently remains under seal.
`2 Petitioner filed two versions of its Opposition. Paper 31 is an unredacted,
`confidential version of the Opposition. Paper 33 is a redacted, public version of
`the Opposition. In this Decision, we cite to the public version (Paper 33). The
`Opposition currently remains under seal. 
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`or other proceedings challenging patents, produce accounting
`records sufficient to show the amounts Unified spent in 2014 in
`connection with any such activities. The records should provide
`at least enough detail to identify the nature of the expense (i.e.,
`subscription fees paid to litigation reporter services), but should
`not include any privileged information.
`Id. at Att. A.3 In addition to the document requests, Patent Owner requests “a three
`hour deposition of Mr. Jakel on information produced in connection with the order
`requested herein.” Id. at 4.
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`II. Discussion
`Patent Owner, as the movant, bears the burden of demonstrating that
`additional discovery is “in the interest of justice.” See 37 C.F.R. §§ 42.20(c),
`42.51(b)(2). The Board has identified factors important in determining whether a
`discovery request meets the statutory and regulatory standard of being “in the
`interest of justice” in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case
`No. IPR2012-00001, Paper 26, 6–7 (PTAB, Mar. 5, 2013) (informative). Of
`particular weight in our analysis is the first Garmin factor:
`More Than a Possibility and Mere Allegation—The mere
`possibility of finding something useful, and mere allegation that
`something useful will be found, are insufficient to demonstrate
`that the requested discovery is necessary in the interest of
`justice. The party requesting discovery should already be in
`possession of evidence tending to show beyond speculation that
`in fact something useful will be uncovered. [In this context,
`“useful” means “favorable in substantive value to a contention
`of the party moving for discovery.”]
`Patent Owner argues that the Garmin factors weigh in favor of granting all
`of its discovery requests. Id. at 5–14. Patent Owner asserts that Petitioner exists
`for the sole purpose of challenging patents held by non-practicing entities
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`3 Patent Owner lists the details of its document requests on a page identified as
`“Attachment A,” which follows the substantive discussion and Certificate of
`Service in the Motion.
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`(“NPEs”) on behalf of Petitioner’s members. Id. at 5–7. Patent Owner argues that
`Petitioner’s members fund the inter partes review (“IPR”) activity conducted by
`Petitioner. Id. at 7–10. Patent Owner contends that Petitioner engages in only
`trivial activity not related to IPRs. Id. at 10–12. Patent Owner argues that
`Petitioner successfully used litigation initiated by Patent Owner to recruit new
`members. Id. 12–13. Addressing Petitioner’s prior arguments that Petitioner is the
`only real party-in-interest, Patent Owner argues that “it is not plausible that
`members, who are solicited by marketing materials that specifically reference the
`Dragon litigation, and trumpet [Petitioner’s] services, including most importantly,
`the filing and prosecution of IPR proceedings, did not expect that it was likely that
`an IPR would be filed in exchange for [money] they paid.” Id. at 13. Based on
`these contentions and the evidence cited in support of them, Patent Owner asserts
`that its Motion “supports a finding that [Petitioner] is not the real party in interest,
`and supports [Patent Owner’s] request for additional discovery.” Id. at 5.
`Petitioner argues that the Motion does not demonstrate that the discovery
`sought will produce something useful regarding the real party-in-interest issue.
`Paper 33, 2. Petitioner argues that the Motion does not tie the requested discovery
`to the real party-in-interest issue. Id. at 3. Petitioner further asserts that the
`Motion includes many speculative arguments. Id. at 4. For example, Petitioner
`argues that the Motion speculates when arguing what is “not plausible.” Id. at 5–6.
`Petitioner also argues that Patent Owner’s assertion that Petitioner has no
`significant non-IPR activity is not relevant to the real party-in-interest issue. Id. at
`6.
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`The documents Patent Owner seeks in its first, second, and fourth requests
`relate to aspects of Petitioner’s business other than this case. Patent Owner does
`not explain how these documents would be useful in supporting its argument that
`Petitioner did not identify all real parties-in-interest. We note that these documents
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`might support Patent Owner’s contention that Petitioner does not engage in any
`significant deterrent activity other than filing and prosecuting IPRs. But even
`accepting this contention as accurate, we are persuaded on the current record that
`Petitioner did not fail to name all real parties-in-interest in the Petition, as
`explained in our decision instituting inter partes review. Paper 37, 8–14.
`In the third document request, Patent Owner seeks information directly
`related to the present case—“[a]ccounting records sufficient to show the amounts
`Unified spent in preparing to file, filing, and prosecuting IPR2014-01252.” Paper
`29, Att. A. Even so, Patent Owner does not persuade us that this document
`request, as written, is tailored to seek information that would prove useful in
`demonstrating that any of Petitioner’s members constitute real parties-in-interest.
`If accurate, Patent Owner’s allegations describe circumstances in which some of
`Petitioner’s members could have possibly behaved in a way that would make them
`real parties-in-interest in the present case. Patent Owner does not explain,
`however, how information showing the amounts that Petitioner spent on various
`activities associated with prosecuting this case alone would help establish that any
`of Petitioner’s members actually did behave in a way that would make them real
`parties-in-interest. Patent Owner has not, for example, sought information
`showing that particular members paid or reimbursed Petitioner for expenses
`associated with the present case (aside from having paid their general subscription
`fees).
`As noted above, the deposition that Patent Owner seeks would relate to the
`information in the requested documents. See Paper 29, 4. Because Patent Owner
`does not persuade us that the information sought in the document requests would
`be useful, we are also unpersuaded that a deposition on the same subject matter
`would be useful.
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`For the foregoing reasons, Patent Owner’s Motion does not demonstrate that
`the requested additional discovery is in the interest of justice. Accordingly, we
`deny Patent Owner’s current Motion.
`III. Order
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion for Additional Discovery is denied.
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`PETITIONER:
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`Michael Kiklis
`cpdocketkiklis@oblon.com
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`Katherine Cappaert
`cpdocketcappaert@oblon.com
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`Scott McKeown
`cpdocketmckeown@oblon.com
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`PATENT OWNER:
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`Jason Angell
`janfell@fawlaw.com
`DragonIPR@fawlaw.com
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