Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 21
`Entered: May 11, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Case IPR2015-00059
`Patent 7,916,781 B2
`_______________
`
`Before KALYAN K. DESHPANDE, GLENN J. PERRY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`
`DECISION ON MOTION
`Granting in Part Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`Tel: 571-272-7822
`
`Paper 21
`Entered: May 11, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Case IPR2015-00059
`Patent 7,916,781 B2
`_______________
`
`Before KALYAN K. DESHPANDE, GLENN J. PERRY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`
`DECISION ON MOTION
`Granting in Part Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`Case IPR2015-00059
`Patent 7,916,781
`
`INTRODUCTION
`
`In its Preliminary Response (Paper 13) California Institute of
`Technology (“Patent Owner”) argued that Hughes (“Petitioner”) failed to
`name all real parties in interest. The following figure is reproduced from
`page 9 of Patent Owner’s Preliminary Response.
`
`
`The figure portrays relationships among various entities, collective referred
`to as the “Echostar” entities, for convenience.
`The panel authorized additional briefing on the issue of unnamed real
`parties in interest. In response, Petitioner (Paper 15) and Patent Owner
`(Paper 16) filed briefs. Petitioner also filed, without authorization and in
`support of Paper 15, a Declaration of T. Jezek, in house Intellectual Property
`Counsel of Hughes Network Systems, LLC. Ex. 1070.
`Pursuant to panel authorization, Patent Owner filed a Motion for
`Discovery from Petitioner. Paper 17 (“Mot.”). Petitioner opposes. Paper
`20. In its motion, Patent Owner seeks: 1) documents and things reviewed
`by Timothy Jezek in conjunction with preparation of declaration filed as Ex.
`1070; 2) legal bills issued to Hughes, EchoStar, and/or DISH related to both
`the related District Court litigation and IPR proceedings; 3) indemnification
`agreements among the Echostar entities; 4) communications concerning
`drafts of IPR petitions, strategy and prior art cited in the IPR petitions; 5)
`
`2
`
`
`
`Case IPR2015-00059
`Patent 7,916,781
`
`instructions and agreements relating to walling off work on the IPR
`proceedings from work on the District Court litigations; and 6) names of
`individuals at the Echostar entities with decision making authority regarding
`the IPR proceedings and District Court litigation. Patent Owner also asks
`that we expunge the unauthorized declaration and, in the event we do not
`expunge the declaration, grant discovery related to it including cross-
`examination of Mr. Jezek.
`Patent Owner explained in its preliminary response (Paper 13) reasons
`why it considered DISH Network Corporation, DISH Network L.L.C., and
`dishNET Satellite Broadband L.L.C. (collectively “DISH”), as well as
`EchoStar Corporation to be real parties-in-interest along with the petitioner,
`Hughes. The Board held a telephonic conference regarding the real party-in-
`interest issue on February 25, 2015, during which Hughes effectively
`conceded EchoStar is a real party-in-interest. Ex. 2016, 18:22-23. Footnote
`1 of our Decision to Institute (Paper 18) indicates that we consider EchoStar
`Corporation, parent of Hughes Communications, Inc., to be a real party in
`interest.
`Patent Owner notes that aside from Mr. Jezek’s declaration, Hughes
`has not provided evidentiary support for its contention that it properly named
`the real parties-in-interest beyond a single exhibit containing a portion of a
`motion for summary judgment filed by Hughes and DISH in one of the
`related district court cases.
`Patent Owner argues that its requests are “in the interests of justice” as
`required by 37 C.F.R. 42.51(b)(2)(i); its discovery requests are narrowly
`tailored to the issue of whether the DISH entities should have been named as
`real parties-in-interest, and take into consideration the five factor test applied
`
`3
`
`
`
`Case IPR2015-00059
`Patent 7,916,781
`
`in Garmin Int’l, Inc. et al v. Cuozzo Speed Techs. LLC, IPR2012-00001
`(Decision on Motion for Additional Discovery March 5, 2013) (identifying
`factors (i) more than a possibility and mere allegation; (ii) litigation
`positions and underlying basis, (iii) ability to generate equivalent
`information by other means, (iv) easily understandable instructions, and (v)
`requests not overly burdensome to answer). Paper 17.
`Petitioner opposes the Motion, arguing that Patent Owner’s requests
`are founded on mere speculation and that the requests are not necessary in
`the interests of justice. Paper 20.
`
`DISCUSSION
`
`On this record, Patent Owner’s requests are more sweeping than
`appropriate in view of the Garmin factors. Nevertheless, in view of the
`importance of 35 U.S.C. § 312(a)(2). we deem some of Patent Owner’s
`requests to be appropriate and in the interests of justice. Correctly naming
`real parties in interest is a threshold issue for granting a petition for inter
`partes review. The Board has vacated decisions to institute trial upon
`deciding that a real party in interest had not been identified in the petition.
`The Jezek declaration was unauthorized. As such it will be expunged.
`Patent Owner’s requests for discovery related to the Jezek declaration are
`moot and, therefore, denied.
`We have already determined that EchoStar is a real party in interest.
`The only question remaining is whether DISH is a real party in interest. The
`most significant factor related to our determination is whether DISH
`exercised control over the IPR proceedings. We, therefore, authorize
`discovery that is more limited than requested. Discovery is limited to
`
`4
`
`
`
`Case IPR2015-00059
`Patent 7,916,781
`
`documents in the possession of EchoStar and Hughes to limit burden on
`Petitioner.
`We authorize discovery of legal bills that demonstrate involvement of
`DISH in any of the IPR proceedings. We further authorize discovery of
`communications from DISH (not from other entities) related to drafts and
`approvals of IPR petitions. Limiting Patent Owner’s requests in this manner
`strikes a balance between unduly burdening Petitioner while still allowing
`for the discovery of key documents that may resolve the issue of unnamed
`real parties in interest.
`At this time, the remainder of Patent Owner’s requests are denied
`without prejudice.
` Should any of the documents Petitioner is required to produce be
`business confidential, Petitioner is authorized to seek an appropriate
`protective order.
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the Jezek declaration (Ex. 1070) be expunged;
`FURTHER ORDERED that Petitioner shall produce documents in the
`possession of EchoStar and Hughes as follows:
` 1) legal bills demonstrating DISH involvement in the IPR
`proceedings, and 2) communications from DISH (not from other entities)
`related to drafts and approvals of IPR petitions;
`FURTHER ORDERED that the remainder of Patent Owner’s requests
`are denied without prejudice;
`FURTHER ORDERED that Petitioner is authorized to file a motion
`for a protective order.
`
`
`5
`
`
`
`Case IPR2015-00059
`Patent 7,916,781
`
`PETITIONER:
`Eliot D. Williams
`eliot.williams@bakerbotts.com
`
`G. Hopkins Guy III
`hop.guy@bakerbotts.com
`
`BAKER BOTTS, LLP
`
`PATENT OWNER:
`Michael T. Rosato
`mrosato@wsgr.com
`
`Matthew A. Argenti
`margenti@wsgr.com
`
`WILSON SONSINI GOODRICH & ROSATI
`
`
`6
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