`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Elisabeth H. Hunt <Elisabeth.Hunt@WolfGreenfield.com>
`Friday, November 30, 2018 5:36 PM
`Trials; Steve Sereboff; Rich Giunta
`Anneliese Lomonaco; RGiunta-PTAB@WolfGreenfield.com; RPritzker-
`PTAB@WolfGreenfield.com; EHunt-PTAB@WolfGreenfield.com; Bryan S. Conley;
`Jonathan Pearce
`RPX Corp v Applications in Internet Time, IPR Nos. 2015-01750, 2015-01751,
`2015-01752
`
`Follow Up Flag:
`Flag Status:
`
`Follow up
`Flagged
`
`IPR2015‐01750
`IPR2015‐01751
`IPR2015‐01752
`
`
`Dear Board,
`
`Pursuant to the Board’s Order of November 20, 2018, the parties have conferred and submit the following proposals
`regarding discovery and briefing on remand, indicating the points on which the parties agree and those on which they
`disagree.
`
`The main points on which the parties disagree relate to the procedure for discovery. Because there is greater
`agreement between the parties as to briefing schedule, this joint e‐mail first reports the parties’ joint proposal on
`briefing, followed by the different parties’ proposals on discovery. Below are:
`1) a table summarizing the parties’ joint proposal for briefing schedule;
`2) a textual summary of the points of agreement and disagreement between the parties regarding discovery; and
`3) a table of proposed due dates under each party’s proposed discovery procedure.
`
`Deadline:
`
`5 weeks from close of discovery
`
`3 weeks from RPX opening brief
`
`2 weeks from AIT opposition
`
`[Only if authorized by the Board
`after RPX’s reply]
`
`Both parties request oral
`hearing; date at the Board’s
`discretion.
`
`1
`
`Length:
`
`14,000 words
`
`Same as RPX opening brief
`
`7,000 words
`
`
`
`
`
`
`
`Joint Proposal for Briefing Schedule
`
`
`Briefing item:
`
`Opening brief by RPX
`
`Opposition by AIT
`
`Reply by RPX
`
`Sur‐reply by AIT
`
`Oral hearing
`
`
`
`Board’s decision
`
`
`Board’s discretion
`
`
`
`
`
`
`
`Summary of points of agreement and disagreement between the parties regarding discovery
`
`Points of agreement
` The parties agree that RPX will voluntarily produce documentary and/or testimonial evidence responsive to the
`list of discovery items RPX proposed in the parties’ joint e‐mail to the Board of November 15, 2018.
` The parties agree that the Board should order RPX to produce “[d]ocuments discussing any efforts by RPX to
`shield its clients from being named as real parties in interest in inter parte [sic] reviews and covered business
`method reviews” (as mentioned in Judge Reyna’s Concurrence at 12).
` The parties agree that RPX will make available for cross‐examination any declarant whose declaration is served
`with RPX’s production, and that cross‐examination will take place via deposition during a period following the
`production of documents and/or declarations.
` The parties agree that the evidentiary record will be closed at the close of discovery ‐‐that is, before
`briefing. Each party should serve, during the production period, any new evidence on which that party intends
`to rely in its briefing; and each party’s briefing should rely on evidence already of record or served during the
`discovery period, unless the parties agree otherwise or other authorization is obtained from the Board.
`
`
`Points of disagreement
`
`1) The parties disagree as to the required timing for AIT to request additional discovery.
`a. RPX proposes the following:
`i. If AIT desires additional discovery beyond the list of items RPX has agreed to voluntarily provide,
`AIT should provide a list of its discovery requests before the Board orders the initiation of the
`discovery period.
`ii. If the parties cannot reach agreement on any additional discovery requests AIT may have, the
`Board should order motion practice under which AIT files a motion for additional discovery and
`RPX has an opportunity to oppose.
`iii. This process should be concluded before RPX is asked to search for responsive evidence and
`begin production, such that production would be undertaken and completed in a single round.
`
`
`
`b. AIT believes that the CAFC remanded so that the Board could consider the evidence already of record,
`with additional discovery coming only if AIT requests it. AIT is especially concerned that these already
`extended proceedings will continue to drag out to AIT’s considerable harm.
`
`i. Regarding real party in interest, the CAFC stated on p. 30 that the evidence of record “at least
`suggests that RPX may have filed the three IPR petitions, in part, to benefit Salesforce.”
`Regarding privity, Judge Reyna’s stated at p. 8 of his concurrence, “The record suggests that the
`form of substantive legal relationship between RPX and Salesforce precisely is that which
`defines privity.” AIT’s interests therefore lie in the relationship between RPX (and its
`2
`
`
`
`subsidiaries) and Salesforce, especially how that relationship has impacted the IPRs. While AIT’s
`interest centers on how RPX and Salesforce each viewed these IPRs, the relationship between
`RPX and Salesforce leading up to the IPRs is material, in AIT’s view, because it sets the stage. For
`example, this goes to the question of “estoppel by conduct” raised by the CAFC at p. 39. There is
`also the issue generally of how RPX approaches the filing of IPRs, including how RPX accounts for
`them (e.g., RPX’s 2017 10‐K states that RPX’s IPR costs are a cost of revenue from its patent risk
`management services). Accordingly, so long as the Board’s next order encompasses this, and
`RPX’s production is fulsome, AIT does not anticipate requesting additional discovery.
`
`ii. While AIT is amenable to RPX producing more evidence, AIT wishes to balance disclosure of new
`evidence against the considerable harm AIT suffers from each passing day that the cloud of
`these IPRs hang over its patents. AIT is uncertain what RPX will produce, and hopes that no
`additional discovery will be necessary. AIT proposes, therefore, that after RPX makes its initial
`production, AIT will have an opportunity to seek Board approval for additional discovery. This
`forces AIT to decide whether the additional discovery it may request is worth the additional
`delay, and could relieve the Board of the burden of refereeing another dispute between the
`parties.
`
`iii. AIT sincerely hopes that additional discovery is unnecessary, but if necessary, might propound
`limited, targeted document requests, interrogatories and/or requests for admission, as well as
`seek depositions of important witnesses. AIT would want all of this done on an expedited basis.
`
`
`
`Proposed due dates (exemplary) under each party’s proposed discovery procedure
`
`All examples assume the Board’s Order on procedure issues December 7.
`
`
`Example schedule under RPX’s proposed discovery procedure
`
`
`Item due:
`
`Deadline:
`
`AIT motion for
`additional discovery
`
`RPX opposition to AIT’s
`discovery motion
`
`Production of
`documents/declarations
`responsive to
`voluntary/ordered
`discovery, and any
`evidence on which
`either party intends to
`rely in briefing
`
`3 weeks from Board’s
`Order on procedure
`(add an additional week
`if the period includes
`the December holidays)
`
`2 weeks from AIT’s
`discovery motion
`
`(If no motion for
`additional discovery):
`6 weeks from Board’s
`Order on procedure
`
`(If motion for additional
`discovery):
`
`Example dates
`If no motion practice:
`If motion practice:
`
`January 4
`
`[No motion, if AIT has
`no additional discovery
`requests that are not
`agreed upon.]
`
`[No opposition if no
`discovery motion]
`
`January 18
`
`March 1
`(example assuming
`Board’s decision on
`AIT’s discovery motion
`issues February 1)
`
`January 18
`
`3
`
`
`
`1 month from Board’s
`decision on AIT’s
`discovery motion
`
`1 month from
`production of
`documents/declarations
`
`5 weeks from end of
`deposition period
`
`3 weeks from RPX
`opening brief
`
`2 weeks from AIT
`opposition brief
`
`Board’s discretion
`
`Depositions of
`declarants
`
`RPX opening brief on
`the merits
`
`AIT opposition brief
`
`RPX reply brief
`
`Oral hearing
`
`February 18
`
`April 1
`
`March 25
`
`April 15
`
`April 29
`
`
`
`May 6
`
`May 28
`
`June 11
`
`
`
`
`
`
`Example schedule under AIT’s proposed discovery procedure
`
`
`Example due or end dates
`If no motion practice:
`If motion practice:
`
`December 21
`
`December 21
`
`Item due:
`
`Deadline:
`
`Production of
`documents/declarations
`responsive to
`voluntary/ordered
`discovery, and any
`evidence on which
`either party intends to
`rely in briefing
`Depositions of
`declarants
`
`AIT motion for
`additional discovery
`
`RPX opposition to AIT’s
`discovery motion
`
`Board order on
`additional discovery
`
`2 weeks from Board’s
`Order on procedure
`
`
`1 month from
`production of
`documents/declarations
`
`2 weeks from last
`deposition
`
`1 week from AIT’s
`discovery motion
`
`Board’s discretion
`
`January 21
`
`January 21
`
`[not applicable]
`
`February 4
`
`[not applicable]
`
`February 11
`
`[not applicable]
`
`assume Board’s Order
`on additional
`discovery issues
`February 25 (2 weeks)
`March 11
`
`Production of additional
`discovery
`
`2 weeks from Board
`order
`
`[not applicable]
`
`4
`
`
`
`RPX opening brief on
`the merits
`
`AIT opposition brief
`
`RPX reply brief
`
`Oral hearing
`
`5 weeks from end of
`deposition period
`
`3 weeks from RPX
`opening brief
`
`2 weeks from AIT
`opposition brief
`
`Board’s discretion
`
`February 25
`
`April 15
`
`March 18
`
`April 1
`
`
`
`May 6
`
`May 20
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`