Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Entered: October 20, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RPX CORPORATION
`Petitioner
`
`v.
`
`APPLICATIONS IN INTERNET TIME, LLC
`Patent Owner
`
`Case IPR2015-01750
`Patent 8,484,111 B2
`
`Case IPR2015-01751
`Case IPR2015-01752
`Patent 7,356,482 B21
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`
`
`
`1 This order addresses issues common to all cases; therefore, we issue a
`single order to be entered in each case.
`
`

`
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`Pursuant to our Order, dated October 1, 2015 (Paper 7, “Order”),
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`Patent Owner, Applications In Internet Time, LLC, filed a Motion for
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`Additional Discovery (Paper 8, “Mot.”) and Petitioner, RPX Corporation,
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`filed an Opposition (Paper 9, “Opp.”), in each of the three above-referenced
`
`proceedings.2 Patent Owner seeks additional discovery from Petitioner to
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`determine whether Salesforce.com, Inc. (“Salesforce”) should have been
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`identified as a real party-in-interest (“RPI”) in the instant proceedings.
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`Patent Owner filed a set of proposed discovery requests (Ex. 2001,
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`“Requests”), and Petitioner filed a redlined version of the same indicating
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`proposed changes thereto (Ex. 1016).
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`Additional discovery may be ordered if the party moving for the
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`discovery shows “that such additional discovery is in the interests of
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`justice.” 37 C.F.R. § 42.51(b)(2); see also 35 U.S.C. § 316(a)(5) (requiring
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`discovery in inter partes review proceedings to be limited to “what is . . .
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`necessary in the interest of justice”). The Board has identified five factors
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`(“the Garmin factors”) important in determining whether additional
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`discovery is in the interests of justice. See Garmin Int’l, Inc. v. Cuozzo
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`Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB
`
`Mar. 5, 2013) (Paper 26) (informative) (“Garmin”).
`
`
`2 The relevant Orders and papers filed in each of the three cases are
`identical. Citations are to the papers filed in IPR2015-01750 for
`convenience.
`
`2
`
`

`
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`In its Opposition, Petitioner argues that, because Patent Owner fails to
`
`meet the first Garmin factor,3 discovery should be denied outright.
`
`Opp. 1–9. Petitioner further argues that, if discovery were granted, it should
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`be tailored more narrowly than set forth in Patent Owner’s Requests. Id.
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`at 9–10. We address each of these arguments in turn.
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`Patent Owner alleges facts sufficient to persuade us that its request for
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`discovery meets the first Garmin factor. We find that the following facts are
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`most persuasive. First, Patent Owner’s evidence regarding Petitioner’s
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`business model implies that Petitioner may act as an agent or proxy for third
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`parties. See, e.g., Mot. 1–2 (RPX “‘serve[s] as an extension of the client’s
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`in-house legal team,’” and “represent[s] clients who are accused of patent
`
`infringement, acting as their proxy to ‘selectively clear’ liability for
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`infringement as part of RPX’s ‘patent risk management solutions,’”
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`including “attacking patents that are or will likely be asserted against its
`
`clients.”); Exs. 2006–2008. Second, Salesforce is a client of Petitioner.
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`Mot. 5, 7. Third, Salesforce and Petitioner share a common member of their
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`respective boards of directors. Mot. 7; Exs. 2009–2011. Lastly, Patent
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`Owner has sued Salesforce for infringement of the patents-at-issue in these
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`proceedings and, as of the date the instant Petitions were filed, Salesforce
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`was time-barred under 35 U.S.C. § 315(b) from filing petitions requesting an
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`inter partes review. Mot. 6; Exs. 2002–2003. Additionally, Salesforce
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`previously filed petitions for covered business method patent review of the
`
`
`3 The first Garmin factor requires more than the “mere possibility of finding
`something useful, and mere allegation that something useful will be found”
`and that the “party requesting discovery should already be in possession of
`evidence tending to show beyond speculation that in fact something useful
`will be uncovered.” Garmin, slip op. at 6.
`
`3
`
`

`
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`same patents challenged by the instant Petitions, each of which was denied.
`
`See Salesforce.com, Inc. v. Applications in Internet Time LLC,
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`Case CBM2014-00162 (PTAB Feb. 2, 2015) (Paper 11); Salesforce.com,
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`Inc. v. Applications in Internet Time LLC, Case CBM2014-00168 (PTAB
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`Feb. 2, 2015) (Paper 10).
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`Petitioner argues that “[t]o the extent AIT suggests that Salesforce
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`may be an RPI even if it did not fund, control or direct the IPRs and did not
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`have RPX file them at its behest, that is not the law.” Opp. 3. Petitioner
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`also asserts that much of Patent Owner’s evidence is merely “innocuous,”
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`citing several Board decisions in which discovery was denied or a third party
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`was found not to be an RPI. Opp. 4–9. Each of the cases cited by Petitioner,
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`however, includes only a single one of the many factors present in this case.
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`We are persuaded that the combination of factors present here justifies
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`permitting additional discovery on the issue of whether Salesforce is an RPI.
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`The inquiry regarding whether Salesforce is an RPI in these
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`proceedings is not limited to “control, ability to control, [or] direction of or
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`function of the IPRs by Salesforce,” as asserted by Petitioner. Opp. 1–3.
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`Whether a party constitutes an RPI to a proceeding is a “highly fact-
`
`dependent question,” and “whether the non-party exercised or could have
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`exercised control over [the] proceeding” is merely one exemplary factor
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`listed in the Trial Practice Guide. Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). As stated in the Trial
`
`Practice Guide, proper RPI identification is necessary “to assure proper
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`application of the statutory estoppel provisions,” in order “to protect patent
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`owners from harassment via successive petitions by the same or related
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`parties,” and “to prevent parties from having a ‘second bite at the apple.’”
`
`4
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`

`
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`Id. at 48,759. Further, 35 U.S.C. § 315(b) specifically prevents inter partes
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`review if a “petition requesting the proceeding is filed more than 1 year after
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`the date on which the petitioner, real party in interest, or privy of the
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`petitioner is served with a complaint alleging infringement of the patent.”
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`Thus, details of the relationship between Petitioner and Salesforce and
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`Petitioner’s reasons for filing the instant Petitions, particularly in view of the
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`fact Salesforce is time-barred under 35 U.S.C. § 315(b), are certainly
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`relevant to the RPI inquiry in these proceedings.
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`Regarding Petitioner’s arguments that Patent Owner’s requests are
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`overbroad, overly burdensome, speculative, and directed to
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`communications/relationships with third parties (Opp. 9–10), we agree with
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`Petitioner with respect to Request Nos. 5, 9, and 10 and do not authorize
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`discovery under those requests. As discussed above, however, we determine
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`that Request Nos. 1–4 and 6–8 are tailored to seeking information pertaining
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`to whether Petitioner should have identified Salesforce as an RPI in this
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`proceeding.
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`Upon consideration of each of the Garmin factors, and for the
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`foregoing reasons, we grant Patent Owner’s Motion for Additional
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`Discovery as to Request Nos. 1–4 and 6–8 (as shown in Ex. 2001), but not
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`as to Request Nos. 5, 9, and 10.
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`Accordingly, it is:
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`ORDERED that Patent Owner’s Motion for Additional Discovery is
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`GRANTED as to Request Nos. 1–4 and 6–8 (as shown in Ex. 2001);
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`FURTHER ORDERED that Patent Owner’s Motion for Additional
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`Discovery is DENIED as to Request Nos. 5, 9, and 10 (as shown in
`
`Ex. 2001);
`
`5
`
`

`
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`FURTHER ORDERED that Patent Owner shall serve the authorized
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`Requests no later than October 21, 2015; and
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`FURTHER ORDERED that, following Patent Owner’s service of its
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`Requests, Petitioner shall produce and deliver to Patent Owner all responsive
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`documents no later than November 3, 2015.
`
`
`
`6
`
`

`
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`PETITIONER:
`
`Richard F. Giunta
`Elisabeth H. Hunt
`Randy J. Pritzker
`WOLF, GREENFIELD & SACKS, P.C.
`RGiunta-PTAB@wolfgreenfield.com
`EHunt-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`
`PATENT OWNER:
`
`Steven C. Sereboff
`M. Kala Sarvaiya
`SoCal IP Law Group LLP
`ssereboff@socalip.com
`ksarvaiya@socalip.com
`
`
`
`7