Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 7
`
` Entered: April 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC., HTC CORPORATION, and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00806
`Patent 7,765,482 B2
`____________
`
`
`
`
`Before HOWARD B. BLANKENSHIP, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`On April 10, 2015, Patent Owner Summit 6 LLC (“Patent Owner”)
`
`requested authorization to file a motion for additional discovery. On
`
`April 15, 2015, the panel held a conference call to discuss Patent Owner’s
`
`request, which was attended by John Alemanni and Michael Morlock for
`
`Petitioners Google Inc. (“Google”), HTC Corporation, and HTC America,
`
`
`571.272.7822
`
`
`Paper No. 7
`
` Entered: April 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC., HTC CORPORATION, and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`SUMMIT 6 LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00806
`Patent 7,765,482 B2
`____________
`
`
`
`
`Before HOWARD B. BLANKENSHIP, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`On April 10, 2015, Patent Owner Summit 6 LLC (“Patent Owner”)
`
`requested authorization to file a motion for additional discovery. On
`
`April 15, 2015, the panel held a conference call to discuss Patent Owner’s
`
`request, which was attended by John Alemanni and Michael Morlock for
`
`Petitioners Google Inc. (“Google”), HTC Corporation, and HTC America,
`
`
`
`IPR2015-00806
`Patent 7,765,482 B2
`
`Inc. (collectively, “Petitioner”); and John Shumaker, Brian Mangum, and
`
`Bob Carlson for Patent Owner.
`
`During the call, Patent Owner explained that the basis for its request
`
`for authorization to file a motion for additional discovery is a Mobile
`
`Application Distribution Agreement (“MADA”) between Google and a
`
`third-party, Samsung, which Patent Owner found in its own research.
`
`According to Patent Owner, the terms of the MADA obligated Google to
`
`defend Samsung when Patent Owner sued Samsung in 2011 in the U.S.
`
`District Court for the Northern District of Texas (“the Samsung Case”) for
`
`infringement of U.S. Patent No. 7,765,482 B2—the patent at issue in this
`
`proceeding. Patent Owner intends to seek discovery regarding the
`
`relationship between Google and Samsung. Patent Owner acknowledged
`
`that Petitioner agreed to search for correspondence between Google and
`
`Samsung regarding any obligation of Google to defend Samsung in the
`
`Samsung Case. Nonetheless, Patent Owner represented that its request for
`
`authorization to file a motion for additional discovery is ripe, because the
`
`proposed additional discovery relates to a potential argument that institution
`
`of inter partes review is barred under 35 U.S.C. § 315(b) and Patent
`
`Owner’s Preliminary Response is due in approximately two months. In
`
`addition, Patent Owner indicated that if Petitioner finds any relevant
`
`documents, the parties will need to negotiate a protective order, which could
`
`further delay any document production.
`
`In response, Petitioner indicated that on April 9, 2015—before Patent
`
`Owner requested authorization to file a motion for additional discovery—
`
`Petitioner agreed to perform a good faith search for correspondence between
`
`Google and Samsung related to any obligation of Google to defend Samsung
`
`
`
`2
`
`
`
`IPR2015-00806
`Patent 7,765,482 B2
`
`in the Samsung Case, and indicated to Patent Owner that its search would
`
`take approximately two weeks. Petitioner represented that it has started and
`
`is pursuing diligently a search for relevant documents. Petitioner stated that
`
`if it finds relevant documents during its search, Petitioner will produce them
`
`to Patent Owner, subject to a protective order, the terms of which Petitioner
`
`and Patent Owner will need to negotiate.
`
`Patent Owner responded that the additional discovery it intends to
`
`seek is broader in scope than the documents Petitioner has agreed to search
`
`for and produce. For example, Patent Owner argued that the additional
`
`discovery should include any co-development agreements and other
`
`executed agreements between Google and Samsung. Both Patent Owner and
`
`Petitioner, however, indicated that Patent Owner had not raised the issue of
`
`expanding the scope of Petitioner’s ongoing document search before the call.
`
`Under 37 C.F.R. § 42.51(b)(2)(i), “[t]he parties may agree to
`
`additional discovery between themselves. Where the parties fail to agree, a
`
`party may move for additional discovery.” 37 C.F.R. § 42.51(b)(2)(i)
`
`(emphasis added). Accordingly, this rule permits a motion for additional
`
`discovery only where the parties are unable to reach an agreement regarding
`
`additional discovery. Here, there is no dispute that in response to Patent
`
`Owner’s request for additional discovery, Petitioner agreed to and began to
`
`search for correspondence between Google and Samsung related to any
`
`obligation of Google to defend Samsung in the Samsung Case, and
`
`Petitioner will produce to Patent Owner any relevant documents uncovered
`
`in its search. Because Patent Owner had not raised any objections to the
`
`scope of Google’s searches before requesting authorization to file a motion
`
`for additional discovery, we are not persuaded that Patent Owner has made
`
`
`
`3
`
`
`
`IPR2015-00806
`Patent 7,765,482 B2
`
`sufficient efforts to reach an agreement with Petitioner regarding the scope
`
`of additional discovery. Patent Owner’s request for a motion for additional
`
`discovery is premature and is not permitted under 37 C.F.R. § 42.51(b)(2)(i)
`
`at this time.
`
`We expect the parties to confer and make reasonable, good faith
`
`efforts to reach an agreement regarding the scope of additional discovery. If
`
`such efforts are unsuccessful, Patent Owner may renew its request for
`
`authorization to file a motion for additional discovery no earlier than May 6,
`
`2015. Any further request for authorization to file a motion for additional
`
`discovery from Patent Owner must list the specific additional discovery in
`
`dispute and represent that reasonable, good faith efforts to agree on the
`
`scope of this additional discovery were unsuccessful.
`
`Further, we note that a protective order does not exist in this
`
`proceeding unless the parties file one and the Board approves it. If the
`
`parties conclude that a protective order is necessary, we encourage the
`
`parties to adopt the Board’s default protective order. See Default Protective
`
`Order, Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, App. B
`
`(Aug. 14, 2012). If the parties choose to propose a protective order
`
`deviating from the default protective order, they must submit the proposed
`
`protective order jointly along with a marked-up comparison of the proposed
`
`and default protective orders showing the differences.
`
`
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that Patent Owner’s request for authorization to file a
`
`motion for additional discovery is denied;
`
`
`
`4
`
`
`
`IPR2015-00806
`Patent 7,765,482 B2
`
`
`FURTHER ORDERED that Petitioner and Patent Owner shall make
`
`reasonable, good faith efforts to reach an agreement regarding the scope of
`
`additional discovery;
`
`FURTHER ORDERED that if Petitioner and Patent Owner do not
`
`reach an agreement regarding the scope of additional discovery after such
`
`reasonable, good faith efforts, Patent Owner may renew its request for
`
`authorization to file a motion for additional discovery no earlier than May 6,
`
`2015; and
`
`FURTHER ORDERED that any further request for authorization to
`
`file a motion for additional discovery from Patent Owner must list the
`
`specific additional discovery in dispute and represent that reasonable, good
`
`faith efforts to agree on the scope of this additional discovery were
`
`unsuccessful.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2015-00806
`Patent 7,765,482 B2
`
`PETITIONER:
`
`John Alemanni
`Michael Morlock
`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`JAlemanni@kilpatricktownsend.com
`MMorlock@kilpatricktownsend.com
`
`
`
`PATENT OWNER:
`
`Peter J. Ayers
`John Shumaker
`Brian Mangum
`LEE & HAYES, PLLC
`11501 Alterra Parkway, Suite 450
`Austin, TX 78758
`peter@leehayes.com
`jshumaker@leehays.com
`brianm@leehayes.com
`
`
`
`
`6
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