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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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`FieldComm Group,
`Petitioner
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`v.
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`SIPCO, LLC,
`Patent Owner
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`
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`IPRs 2015-00659, 2015-00663, and 2015-00668
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`__________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`DISCOVERY FROM EMERSON AND FIELDCOMM GROUP
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`IPR2015-00659, 663, and 668
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`Patent Owner, SIPCO, LLC’s (“PO”) Motion should be denied because it
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`seeks third party discovery not authorized by the Board and violates the attorney-
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`client privilege. Further, the discovery directed at Petitioner is the very type of
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`overreach and speculation that the Board has cautioned against. The “facts” do not
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`support the motion. Moreover, the naked and unsupported allegations about a
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`specific third-party, Emerson Electronics Co., are false, invented by PO. Further,
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`each of the five Garmin factors weighs against granting this motion.
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`To keep to the five page limit, this Opposition focuses on factors 1 and 5: (1)
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`PO is not “in possession of evidence tending to show beyond speculation that in
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`fact something useful will be uncovered,” and (5) the requests are not “sensible
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`and responsibly tailored according to a genuine need.” Garmin Int’l, Inc. v. Cuozzo
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`Speed Tech., LLC, Case IPR2012-00001, Paper 26, at 6-7 (PTAB Mar. 5, 2013).
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`I. Response to Statement of Facts
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`Facts 1 and 6 are admitted.
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`Fact 2: Petitioner admits HART is listed as petitioner and real party in
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`interest (“RPI”). Petitioner denies Mr. Schumacher is currently the Chairman of the
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`Board of Hart Communication Foundation (“HCF”), HCF is essentially a defunct
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`entity. Petitioner is without information to confirm or deny that “Mr. Schumacher
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`holds positions of high responsibility at Rosemount and Emerson.” Petitioner
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`admits that the Chairman of the Board is an officer, however Mr. Schumacher had
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`1
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`IPR2015-00659, 663, and 668
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`no involvement in the IPRs at any time for any reason.
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`Fact 3: Denied, the amount in question is an operating deficit that was
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`covered by cash reserves on hand, which were in excess of $800,000.
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`Facts 4 and 5: Petitioner is without information to confirm or deny the
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`alleged facts. Petitioner notes that the “invalidity statement” relied upon by PO
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`also cites sections 101 and 112, negating the conclusion that prior art was the basis
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`at the time of filing. If it did, Petitioner was not aware. PO’s speculative assertion
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`that Emerson must “have prior art” is therefore false.
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`II. SIPCO FAILS TO SHOW THAT ADDITIONAL DISCOVERY
`IS NECESSARY IN THE INTEREST OF JUSTICE
`Garmin requires that the party seeking additional discovery must show that
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`there is more than a “mere possibility of finding something useful, and mere
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`allegation that something useful will be found.” Apple Inc. v. Achates Reference
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`Publishing, Inc., IPR2013-00080, Paper 17, at 5 (PTAB Apr. 3, 2013)(emphasis
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`added). The party moving for discovery must show more than mere relevance and
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`beyond speculation, that something useful will be uncovered. See Garmin at 6–7.
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`PO only speculates that Emerson is an unnamed RPI. However, the test is
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`whether an unnamed party “funds and directs and controls an IPR” or whether that
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`other party is “litigating through a proxy.” TPG at 48,760; Aruze Gaming Macau,
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`Ltd. v. MGT Gaming, Inc., IPR2014-01288, Paper 13, at 12 (PTAB Feb. 20, 2015).
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`This is not the case and PO cannot satisfy this heavy burden.
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`2
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`IPR2015-00659, 663, and 668
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`A. SIPCO’s Requests are Entirely Speculative
`PO alleges and Petitioner denies that Mr. Schumacher had “authority to
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`direct FieldComm/Hart to file IPRs against SIPCO.” Motion at 3. This is untrue, at
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`no time did he have any control over the IPRs. Other than a title, there is nothing to
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`suggest that the Chairman has any such authority and it is denied. Further, the
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`Foundation By-Laws specifically provide that only the President has “general
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`active management of the business.” Ex. 2006 at §4.07. PO has no evidence that
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`the Chairman attempted to assert any speculative authority presumed by PO and it
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`is denied. Further, the entire exercise is suspect since PO did not even seek to
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`depose Mr. Schumacher, which was the basis of this entire motion. Accordingly
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`the discovery sought is a pure “fishing expedition.”
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`Further, PO contends that Emerson “had in its possession prior art to provide
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`to FieldComm/Hart prior to the filing of the IPRs….” Motion at 3-4. Petitioner
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`denies that Emerson provided prior art to Petitioner as suggested by PO. There is
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`no basis for stating that Emerson had “the incentive and ability to contribute to the
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`control, direction, and funding of the IPRs against SIPCO.” Motion at 4. Further,
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`incentive and ability are not proper Garmin factors. HART obtained all prior art
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`from its counsel, independent of any third party. Again, HART had reserves of at
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`least $800,000 in cash in 2013, more than sufficient to fund analysis by its
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`attorneys and well beyond the cost of these matters. Ex. 2007.
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`B. The Discovery is not Narrowly Tailored
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`3
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`IPR2015-00659, 663, and 668
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`Having identified Mr. Schumacher as a central player in a claim of RPI, it is
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`bewildering that PO fails to seek discovery from Mr. Schumacher. By its own
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`discovery requests, PO seeks discovery of everyone but Mr. Schumacher,
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`including third parties unrelated to this matter. Further, PO seeks information
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`clearly protected by various privileges and immunities, devoid of any time
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`constraint. See IPR2012-00026, paper 32; IPR2014-01131, Paper 31 at 5.
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`Requests are also overly broad because they include the attorneys of FieldComm,
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`in violation of attorney/client privilege. Further, by an expansive definition, the PO
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`seeks information from unrelated parties to this action, such as Fieldbus
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`Foundation and there is no fact to support any conclusion that this request will
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`produce “useful” information. Further PO makes naked connections between
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`vague and alleged entities such as Emerson Process Management, which is
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`unknown to Petitioner, and to Petitioner’s knowledge has no association with this
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`action. Finally, the definition of SIPCO IPRs even includes a proceeding not
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`before this Board. Clearly, all these definitions in most respects are overly broad.
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`Ex. 2001, RFPs 1, 2, and 3 request communications between parties that if
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`granted would violate various privileges and immunities, are overly broad, and not
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`reasonably calculated to show a connection with an alleged RPI. Further, with
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`respect to RFPs 1 and 3,“assistance with, filing, and/or preparation of any papers”
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`has no meaning or understanding to Petitioner.
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`4
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`IPR2015-00659, 663, and 668
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`Ex. 2001, RFP 4, is not time bound, even though post-IPR-filing information
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`is not relevant to a real party in interest inquiry. As pointed out earlier, only Mr.
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`Schumacher, is named as a suspect third party, yet discovery of every Board
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`member is requested, without any explanation whatsoever. Petitioner asserts that
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`no “useful” information will come from additional Board members.
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`Ex. 2001, RFP 5, is unclear and not easily understood. For example, the
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`term “request” is not defined, has no scope, no time frame, no explanation how it
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`will lead to discoverable material. Further, it is unduly burdensome to request that
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`Petitioner interview each and every current and former employee, agent, or
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`representative to determine if any of them have any communication with an
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`alleged RPI. Finally, there are no facts or allegations related to the entire
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`FieldComm membership and discovery to this must be denied.
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`Ex. 2002, Interrogatories 1 and 3 reference requests for production in Ex.
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`2002, but Ex. 2002 is a list of interrogatories, with no “No. 4.” Ex. 2002,
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`Interrogatory 2, expressly asks for privileged information and must be denied.
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`Exhibits 2003 and 2004 seek third-party discovery, however, the Board only
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`authorized “discovery … on Petitioner.” Order at 3 (emphasis added). Because
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`Emerson is not the Petitioner, it is unduly burdensome to grant any third-party
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`discovery, especially in light of the procedural steps PO failed to take.1
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`1 35 U.S.C. §24 only allows for depositions at most, not document production.
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`5
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`IPR2015-00659, 663, and 668
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`Respectfully Submitted,
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`By: /Alfred W. Zaher/
`Alfred W. Zaher, Reg. No.: 42,248
`NOVAK DRUCE CONNOLLY
`BOVE + QUIGG LLP
`Two Logan Square
`Suite 300
`Philadelphia, PA 19103
`Attorneys for Petitioner,
`HART Communication Foundation
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`6
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`IPR2015-00659, 663, and 668
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`CERTIFICATE OF SERVICE
`Under 37 C.F.R. §§ 42.6(e), this is to certify that on May 29, 2015, I caused
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`a copy of the foregoing PETITIONER’S OPPOSITION TO PATENT OWNER’S
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`MOTION FOR DISCOVERY FROM EMERSON AND FIELDCOMM GROUP
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`to be served on Patent Owner’s counsel of record listed below by filing in the
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`Patent Review Processing System:
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`Dr. Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`James E. Schutz
`james.schutz@troutmansanders.com
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`/Paul Gonzales/
`Paul Gonzales
`NOVAK DRUCE CONNOLLY
`BOVE + QUIGG LLP
`1000 Louisiana Street
`Fifty-Third Floor
`Houston, TX 77002
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`7
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