UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`
`Petitioners,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`
`Patent Owner.
`____________________________
`
`IPR2015-00059 (Patent 7,916,781)
`____________________________
`
`
`
`PETITIONERS’ MOTION FOR DISCOVERY
`
`
`
`
`
`
`
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`
`Petitioners,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`
`Patent Owner.
`____________________________
`
`IPR2015-00059 (Patent 7,916,781)
`____________________________
`
`
`
`PETITIONERS’ MOTION FOR DISCOVERY
`
`
`
`
`
`
`
`
`
`On September 4, 2015 the Board authorized Petitioners to file this motion
`
`for discovery pursuant to 37 C.F.R. §§ 42.51 and 42.52.
`
`INTRODUCTION
`
`Petitioners seek to obtain limited discovery from the authors of the prior art
`
`publication that forms the basis for the ground upon which this Trial was instituted.
`
`In particular, Petitioners seek limited document discovery and testimony from Dr.
`
`Dariush Divsalar and Dr. Robert McEliece regarding the fact of publication of their
`
`paper: “Coding Theorems for ‘Turbo-Like’ Codes,” (the “Divsalar Reference”),
`
`which was published in the Proceedings of the Thirty-Sixth Annual Allerton
`
`Conference of Communication, Control and Computing. See Ex. 1011. Both Dr.
`
`Divsalar and Dr. McEliece are affiliated with the Patent Owner (California
`
`Institute of Technology). 1 Dr. McEliece is a named inventor on the ‘781 Patent,
`
`which is at issue in this Trial.
`
` This request is in the interest of justice because the discovery will allow
`
`Petitioners to develop a fair record, and will aid the Board in deciding the merits of
`
`this Trial. See Trial Practice Guide (77 Fed. Register 48756, 48761) § I(F)
`
`(“Discovery is a tool to develop a fair record and to aid the Board in assessing the
`
`credibility of the witnesses”).
`
`1 See http://coding.jpl.nasa.gov/index.php/ddivsalar &
`http://www.ee.caltech.edu/EE/Faculty/rjm/. JPL is a division of the California
`Institute of Technology. http://www.caltech.edu/content/jet-propulsion-laboratory.
`Patent Owner has also indicated an intent to rely on Dr. Divsalar as a testifying
`expert witness in the District Court litigation.
`
`1
`
`
`
`As an initial matter, the discovery sought by Petitioners is “Routine
`
`Discovery” that should have already been provided by Patent Owner pursuant to
`
`37 C.F.R. § 42.51(b)(1)(iii). The information sought (information regarding
`
`publication of the Divsalar Reference) is inconsistent with a position advanced by
`
`Patent Owner in its response. See PO Response (Paper 24) at 25 (Patent Owner
`
`arguing that Petitioners’ evidence “fail[s] to establish the public availability of
`
`Divsalar as 102(b) prior art.” ). While Patent Owner has carefully avoided making
`
`an affirmative statement that the Divsalar Reference is not a prior art publication,
`
`its argument asks the Board to avoid reaching the merits of the validity of the
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`challenged claims based on the date of public availability of the Divsalar
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`Reference. Accordingly, Petitioners are entitled to limited discovery from the
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`Patent Owner’s witnesses regarding publication of the Divsalar Reference under
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`the Routine Discovery standard.
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`Moreover, the discovery sought by Petitioners is appropriate under the
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`Additional Discovery standard of 37 C.F.R. § 42.51(b)(2), because the discovery is
`
`in the interests of justice. As explained below, Petitioners’ proposed discovery
`
`satisfies all of the Garmin factors, and the discovery will assist the Board in
`
`determining whether the Divsalar Reference is a prior art publication, which is an
`
`important issue in this Trial -- indeed, Patent Owner devotes over eight pages of
`
`its Response to the issue. See PO Resp. (Paper 24) at 20-29. While Patent Owner
`
`might prefer to avoid the merits of this Trial by suggesting that the Divsalar
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`2
`
`
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`Reference is not prior art, while shielding from discovery the authors of that very
`
`document, such a result would not be in the interests of justice. Instead, this
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`discovery should be permitted, so that the Board can have before it this highly
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`relevant evidence when rendering its Final Written Decision.
`
`I.
`
`PROPOSED DISCOVERY
`
`Petitioners seek to take the following discovery from each of Dr. Dariush
`
`Divsalar and Dr. Robert McEliece (the “Witnesses”):
`
`A. DEFINITIONS:
`
` “Documents” shall mean all forms of recording information, including
`
`emails.
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`“Divsalar Reference” shall mean: “Coding Theorems for ‘Turbo-Like’
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`Codes” by Dariush Divsalar, Hui Jin, and Robert J. McEliece.
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`B. DOCUMENT REQUESTS
`
`1. All Documents reflecting or referring to your submission of the
`
`Divsalar Reference for publication.
`
`2. All Documents reflecting or referring to availability of the Divsalar
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`Reference to members of the public.
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`3. All Documents reflecting or referring to publication of the Divsalar
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`Reference.
`
`
`
`3
`
`
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`C. DEPOSITION
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`Petitioners seek no more than 2 hours of deposition testimony with
`
`each Witness regarding the documents produced in response to this
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`discovery request, and regarding the submission, presentation, and
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`publication of the Divsalar Reference.
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`II. ARGUMENT
`
`A.
`
`PETITIONERS ARE ENTITLED TO THE PROPOSED
`DISCOVERY BECAUSE IT IS “ROUTINE DISCOVERY”
`
`A party to a Trial is required to serve on the opposing party as “Routine
`
`Discovery” any “relevant information that is inconsistent with a position advanced
`
`by the party during the proceeding.” 37 C.F.R. § 42.51(b)(1)(iii). This
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`requirement extends to “inventors.” Id. Here, the discovery sought from at least
`
`Dr. McEliece qualifies as Routine Discovery, because Dr. McEliece is an inventor
`
`of the challenged patent, and the information sought is inconsistent with the
`
`position taken by Patent Owner in its Response.
`
`As discussed above, Patent Owner devoted over eight pages of its Response
`
`to arguing that there was insufficient evidence to conclude that the Divsalar
`
`Reference qualifies as a prior art publication under 102(b). See PO Resp. (Paper
`
`24) at 20-29. However, Dr. McEliece is likely to have in his possession documents
`
`that would be inconsistent with Patent Owner’s argument. For instance, Dr.
`
`
`
`4
`
`
`
`McEliece’s CV lists the Divsalar Reference as a “Publication.”2 Moreover, as the
`
`Board noted in its Institution Decision (Paper 18), the Divsalar Reference is
`
`identified as a prior art reference on the face of the ‘781 Patent, as it was identified
`
`by the inventors (including Dr. McEliece) during prosecution in an IDS with a
`
`publication date of “September 1998.” See ‘781 File History (Ex. 1006), p. 4 (line
`
`BD).
`
`Accordingly, at least as to information from Dr. McEliece, Petitioners are
`
`entitled to their requested discovery under the Routine Discovery standard.
`
`Indeed, Patent Owner should have already provided these materials under
`
`42.51(b)(1)(iii).
`
`B.
`
`PETITIONERS ARE ENTITLED TO THE PROPOSED
`DISCOVERY BECAUSE IT IS IN THE INTERESTS OF
`JUSTICE
`
`Petitioners are similarly entitled to this discovery under the “Additional
`
`Discovery” standard of 37 C.F.R. § 42.51(b)(2), because these requests are in the
`
`interests of justice. This discovery is consistent with the principles articulated in
`
`the Trial Practice Guide, that “[d]iscovery is a tool to develop a fair record.” See
`
`Trial Practice Guide (77 Fed. Register 48756, 48761) § I(F). The discovery sought
`
`by Petitioners is precisely the type of information that the Trial Practice Guide
`
`(TPG) contemplates is discoverable under the interest of justice standard. In
`
`particular, the TPG notes:
`
`
`2 http://www.ee.caltech.edu/EE/Faculty/rjm/biblio.pdf
`
`5
`
`
`
`“An additional discovery request could be granted under either [good
`cause or interests of justice] standard, for example, when a party
`raises an issue where the evidence on that issue is uniquely in the
`possession of the party that raised it.”
`
`Id. Here, Patent Owner has argued that the Divsalar Reference should not be
`
`considered a prior art publication under 102(b), while attempting to shield from
`
`discovery the very authors of that reference who would have unique knowledge
`
`regarding the publication of that reference -- including one of the inventors of the
`
`challenged patent. This is precisely the type of situation where the interests of
`
`justice would be served by permitting discovery.
`
`The Board’s guidance in Garmin Int'l Inc. et al. v. Cuozzo Speed Techs.
`
`LLC, also shows the Petitioners’ request to be in the interest of justice. IPR2012-
`
`00001, Paper 26, 3-4. Petitioners analyze the Garmin factors below:
`
`More Than A Possibility And Mere Allegation. Petitioners have already
`
`submitted substantial evidence that the Divsalar Reference is a publication
`
`authored by the Witnesses. See Ex. 1011, Ex. 1064, Ex. 1006, p.4. Both
`
`Witnesses include the Divsalar Reference as a publication on their public
`
`biographies,3 and the inventors disclosed the Divsalar Reference to the PTO as a
`
`prior art reference with a publication date of “September 1998.” See ‘781 File
`
`History (Ex. 1006), p. 4 (line BD). Thus, there is more than the requisite threshold
`
`3 http://www.ee.caltech.edu/EE/Faculty/rjm/biblio.pdf;
`http://coding.jpl.nasa.gov/index.php/ddivsalar.
`
`
`
`6
`
`
`
`of evidence showing that the Witnesses are likely in possession of information
`
`showing that the Divsalar Reference is a publication that is prior art to the ‘781
`
`Patent. This evidence would be useful to Petitioners’ positions in this Trial, as it
`
`would confirm that the Divsalar Reference is available as prior art and would
`
`contradict Patent Owner’s position that the Divsalar Reference should not be
`
`considered by the Board as prior art.
`
`Litigation Positions And Underlying Basis. These requests do not ask for
`
`Patent Owner’s litigation positions or the underlying basis for those positions.
`
`Instead, the requests are limited to a simple factual inquiry into publication of a
`
`prior art reference.
`
`Ability To Generate Equivalent Information By Other Means. Patent Owner
`
`controls these two witnesses, who are the authors of the publication. See supra at
`
`p. 1. Petitioners have no way other than this discovery to learn what evidence is
`
`known or in the possession of these authors regarding publication of the Divsalar
`
`Reference. Petitioners have already obtained a voluntary declaration testimony
`
`from a librarian establishing that the Divsalar Reference was published and
`
`publicly available before the critical date; however, the authors of the Divsalar
`
`Reference would have unique knowledge regarding the publication of the Divsalar
`
`Reference. Thus, Petitioners lack the ability to generate equivalent information by
`
`other means.
`
`
`
`7
`
`
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`Easily Understandable Instructions. The proposed requests are easily
`
`understandable and straightforward.
`
`Requests Not Overly Burdensome To Answer. Petitioners’ proposed
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`document requests are simple and compliance should be easy. Petitioners propose
`
`short depositions of each witness, which should not significantly disrupt the
`
`witnesses schedules. Petitioners counsel will travel to whatever domestic location
`
`the witnesses prefer to avoid disruption to their schedules. While Petitioners have
`
`requested up to 2 hours with each witness, the depositions may be even shorter if
`
`the witnesses are cooperative and objections are minimal.
`
`In an effort to minimize the burden on the parties and witnesses, Petitioners
`
`are not requesting discovery from the other author of the Divsalar Reference (Hui
`
`Jin), who is also a co-inventor of the challenged patent. It appears that he is no
`
`longer affiliated with or under the control of the Patent Owner.
`
`Finally, to the extent patent owner attempts to argue that this discovery is
`
`burdensome because Dr. Divsalar was previously deposed in the co-pending
`
`District Court litigation, that argument lacks merit. First, fact discovery in that
`
`litigation closed before Patent Owner filed its preliminary response in this
`
`proceeding. Therefore, Petitioners had no way of knowing at the time Dr. Divsalar
`
`was deposed in his capacity as a fact witness that the Patent Owner would later
`
`
`
`8
`
`
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`attempt to argue in this Trial that the Divsalar Reference is not available as a prior
`
`art publication.4
`
`Accordingly, under the Garmin factors, Petitioners’ request for additional
`
`discovery is within the interest of justice.
`
`CONCLUSION
`
`Because the interests of justice would be served by granting the limited
`
`additional discovery sought by Petitioners, and because this information likely
`
`should have already been served on Petitioners by Patent Owner, Petitioners
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`respectfully request that its request for additional discovery be granted.
`
`
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`Respectfully Submitted,
`
`Date: September 10, 2015
`
` /Eliot D. Williams/
`
`
`
`
`
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`1001 Page Mill Road, Bld. 1, Suite 200
`Palo Alto, California 94304-1007
`650.739.7510
`
`Attorneys for Petitioners, Hughes Network
`Systems, L.L.C. and Hughes
`Communications, Inc.
`
`
`
`
`4 Dr. Divsalar was deposed in his role as Patent Owner’s testifying expert after
`Patent Owner’s preliminary response was filed; however, that deposition took
`place after fact discovery had closed, and related to Dr. Divsalar’s expected expert
`testimony in that litigation.
`
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on the 10th
`day of September, a complete and entire copy of the foregoing
`
`
`PETITIONERS’ MOTION FOR DISCOVERY
`
`
`was served via email on the Patent Owner at the correspondence address of record
`in the proceeding:
`
`
`Michael T. Rosato
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`
`Matthew A. Argenti
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`margenti@wsgr.com
`
`
`
`
`
`
` /Eliot D. Williams/
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`1001 Page Mill Road, Bld. 1, Suite 200
`Palo Alto, California 94304-1007
`650.739.7510
`
`Attorneys for Petitioners, Hughes Network
`Systems, L.L.C. and Hughes
`Communications, Inc.
`
`
`
`
`
`
`Date: September 10, 2015
`
`
`
`
`
`
`
`
`10
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