Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 8
`
` Entered: July 30, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01264, Patent 7,945,856 B2
`Case IPR2015-01268, Patent 7,181,690 B1
`Case IPR2015-01269, Patent 7,493,558 B2
`Case IPR2015-01319, Patent 8,082,501 B2
`Case IPR2015-01321, Patent 8,145,998 B2
`Case IPR2015-01325, Patent 8,145,998 B2
`____________
`
`Before KARL D. EASTHOM, KERRY BEGLEY, and JASON J. CHUNG,
`Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`ORDER
`Authorizing Patent Owner’s Motion for Routine or Additional Discovery
`37 C.F.R. § 42.51
`
`
`
`
`
`On July 23, 2015, the panel held a conference call, at the request of
`Patent Owner Worlds Inc. (“Patent Owner”), to discuss Patent Owner’s
`request for authorization to file a motion for routine discovery or,
`
`
`571.272.7822
`
`
`Paper No. 8
`
` Entered: July 30, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01264, Patent 7,945,856 B2
`Case IPR2015-01268, Patent 7,181,690 B1
`Case IPR2015-01269, Patent 7,493,558 B2
`Case IPR2015-01319, Patent 8,082,501 B2
`Case IPR2015-01321, Patent 8,145,998 B2
`Case IPR2015-01325, Patent 8,145,998 B2
`____________
`
`Before KARL D. EASTHOM, KERRY BEGLEY, and JASON J. CHUNG,
`Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`ORDER
`Authorizing Patent Owner’s Motion for Routine or Additional Discovery
`37 C.F.R. § 42.51
`
`
`
`
`
`On July 23, 2015, the panel held a conference call, at the request of
`Patent Owner Worlds Inc. (“Patent Owner”), to discuss Patent Owner’s
`request for authorization to file a motion for routine discovery or,
`
`
`
`IPR2015-01264, -01268, -01269,
`-01319, -01321, and -01325
`
`alternatively, additional discovery in each of the above-captioned cases. The
`call was attended by Wayne Helge for Patent Owner and Michael Rosato,
`Matthew Argenti, and Andrew Brown for Petitioner Bungie Inc.
`(“Petitioner”). Patent Owner filed a transcript of the call as Exhibit 2001 in
`each case.
`
`During the call, Patent Owner explained that it obtained a publicly
`available agreement between Petitioner and a third party, Activision
`Publishing, Inc. (“Activision”), titled “Software Publishing and
`Development Agreement” (“Bungie-Activision Agreement”). Ex. 2002.
`Patent Owner seeks five categories of documents related to this agreement:
`(1) documents related to any use of Activision’s development advances
`pursuant to the agreement or any other money provided by Activision to
`fund these cases, (2) documents related to Activision’s opportunity to review
`and approve Petitioner’s legal review of intellectual property issues, (3) a
`change of control agreement referenced in the agreement, (4) documents
`related to any claim by Activision for indemnification by Petitioner
`regarding Patent Owner’s patents, and (5) any communications regarding
`categories 1–4. In Patent Owner’s view, the requested discovery may lead
`to evidence showing that Activision is an unnamed real party-in-interest—
`preventing institution of inter partes review under 35 U.S.C. § 312(a)(2) and
`35 U.S.C. § 315(b).
`
`Counsel for Petitioner explained that he had not received a copy of the
`Bungie-Activision Agreement. Petitioner further represented that Activision
`has not funded or controlled the cases. Petitioner also questioned the
`usefulness of the requested discovery, arguing that there is a threshold legal
`question regarding whether the time bar of 35 U.S.C. § 315(b) would apply
`
`2
`
`
`
`
`IPR2015-01264, -01268, -01269,
`-01319, -01321, and -01325
`
`even if Petitioner were able to establish that Activision is a real party-in-
`interest in these cases.
`Patent Owner then clarified that Patent Owner and Petitioner had not
`had any discussion regarding the requested discovery. Instead, the parties
`had an email correspondence with respect to Patent Owner’s request for a
`call with the Board.
`
`In light of the parties’ representations regarding the extent of their
`discussions and communications regarding Patent Owner’s discovery
`requests, we ordered the parties to meet and confer regarding each category
`of requested discovery. See 37 C.F.R. § 42.51(b)(2) (stating that “a party
`may move for additional discovery” “[w]here the parties fail to agree” “to
`additional discovery between themselves”) (emphasis added). We asked the
`parties to provide an update to the Board regarding the discovery dispute
`within five business days of the call.
`On July 29, 2015, Patent Owner informed the Board that the parties
`had met and conferred regarding Patent Owner’s discovery requests on July
`25, 2015. Patent Owner indicated that the parties were unable to reach any
`agreement and have reached an impasse regarding each requested category
`of discovery.
`
`After hearing from the parties on the call and the subsequent update
`regarding the parties’ meet and confer, we determine that Patent Owner’s
`motion for routine discovery under 37 C.F.R. § 42.51(b)(1) or additional
`discovery under 37 C.F.R. § 42.51(b)(2) is warranted under the
`circumstances. Therefore, we grant Patent Owner’s request.
`In its motion, Patent Owner should explain explicitly what discovery
`is requested and its position regarding why each category of requested
`
`3
`
`
`
`
`IPR2015-01264, -01268, -01269,
`-01319, -01321, and -01325
`
`discovery is “inconsistent with a position advanced by [Petitioner],” 37
`C.F.R. § 42.51(b)(1), and/or is necessary and narrowly tailored “in the
`interests of justice,” 37 C.F.R. § 42.51(b)(2). Patent Owner also should
`explain, with specificity, what evidence suggests that there is relevant and
`discoverable evidence in each category of requested discovery. In
`particular, Patent Owner should explain its position and any authority
`regarding how the discovery would be relevant and useful in establishing
`that Activision is an unnamed real party-in-interest in violation of 35 U.S.C.
`§ 312(a)(2) and that 35 U.S.C. § 315(b) applies to the facts of each case. See
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip
`op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (informative) (explaining that
`“[t]he 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”).
`ORDER
`
`
`
`Accordingly, it is:
`ORDERED that Patent Owner’s request for authorization to file a
`motion for routine or additional discovery is granted;
`FURTHER ORDERED that Patent Owner’s motion for routine or
`additional discovery must be filed by August 6, 2015 and is limited to ten
`pages; and
`FURTHER ORDERED that Petitioner may file an opposition to
`Patent Owner’s motion, limited to ten pages, within five business days after
`the motion is filed.
`
`
`
`
`4
`
`
`
`
`IPR2015-01264, -01268, -01269,
`-01319, -01321, and -01325
`
`PETITIONER:
`Michael T. Rosato
`mrosato@wsgr.com
`
`Matthew A. Argenti
`margenti@wsgr.com
`
`PATENT OWNER:
`Wayne M. Helge
`whelge@dbjg.com
`
`Donald L. Jackson
`djackson@dbjg.com
`
`Michael R. Casey
`mcasey@dbjg.com
`
`5
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