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`K E L L E Y D R Y E & W A R R E N L L P
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`A L I M I T E D L I A B I L I T Y P A R T N E R S H I P
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`333 W EST W AC K ER D RI V E
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`SU IT E 2600
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`C H I C AG O , I L 60606
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`W A S H I N G T O N , D C
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`L O S A N G E L E S , C A
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`C H I C A G O , I L
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`H O U S T O N , T X
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`A U S T I N , T X
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`P A R S I P P A N Y , N J
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`S T A M F O R D , C T
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`B R U S S E L S , B E L G I U M
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`A F F I L I A T E O F F I C E
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`M U M B A I , I N D I A
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Madison Building (East)
`60 Dulany Street
`Alexandria, VA 22313
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`Your Honors:
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`I.M.L. SLU, Petitioner v. WAG ACQUISITION, LLC, Patent Owner
`Inter Partes Review Cases No. IPR2016-01656 and IPR2016-01658
`U.S. Patent Nos. 8,122,141 and 8,364,839
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`We represent petitioner I.M.L. SLU in the above-captioned, instituted inter
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`partes review cases, set for oral argument the afternoon of November 30, 2017.
`We write to request discovery from the ostensible patent owner, WAG Acquisition,
`LLC (“WAG”) as a result of information we discovered last week that WAG may
`not have an ownership interest in the patents.
`
`According to a letter submitted to the judge in the district court litigation
`over the same patents as those at issue in the IPRs, which is enclosed as Exhibit
`1014, 1 discovery in the litigation revealed that:
`
`
`1 The letter was filed with the district court September 26, 2017, but since we are
`not parties to that litigation, we did not see it until November 15, 2017. WAG has
`an obligation to inform the Board, and the petitioner, of other parties-in-interest; it
`has not disclosed Woodsford or its relationship with Woodsford in any IPR filing.
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`KELLEY DRYE & WARREN LLP
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`Patent Trial and Appeal Board
`Page Two
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`Woodsford Litigation Funding Limited and Woodsford
`Litigation Funding (US) (“Woodsford”) are funding WAG’s
`participation in the above actions. In exchange, WAG has ceded
`to Woodsford substantial rights in the patents-in-suit such that
`WAG lacks constitutional standing to sue; or at the very least,
`WAG lacks prudential standing to sue without joining
`Woodsford.
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`Letter from Justin T. Quinn, Esq., to the Honorable Esther Salas, U.S.D.J., WAG
`Acquisition L.L.C. v. MultiMedia, LLC, et al. (14-cv-02340).
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`Petitioner is not a party to that litigation, and has no access to its discovery
`or any confidential submissions or disclosures made in that litigation. In the past
`few days, by both email and telephone, we have asked WAG to give us copies of
`the agreements with Woodsford so that we can determine whether Woodsford has
`had sufficient control over the IPR proceedings or the patents such that it should
`have been disclosed in the IPR, and whether WAG has sufficient interest in the
`patents that it may make submissions to the Board and be heard in their defense.
`Information available in the media states that WAG’s law firm has had a litigation
`funding agreement with Woodsford since at least August of this year, but that
`according to their press release, the relationship with Woodsford was long-
`standing. Enclosed are copies of two of the relevant articles. (Law360, “Lewis
`Baach Inks $20M Third-Party Funding Deal,” Aug. 16, 2017 (Exhibit 1015); Press
`Release, Aug. 16, 2017 (Exhibit 1016)).
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`Decisions by this Board hold that submissions from an entity without
`sufficient ownership interest should be expunged or disregarded. See Bio-Rad
`Labs., Inc. v. Cal. Inst. Of Tech., IPR2015-00009 (Paper 9) and IPR2015-00010
`(Paper 8) (March 6, 2015) (in absence of proof that Fluidigm’s license conveyed
`sufficient rights, its preliminary response would be expunged); Motorola Mobility
`LLC v. Patent of Michael Arnouse, IPR2013-00010 (Paper 27) (April 5, 2013)
`(inventor who assigned rights in the patent does not have the right to participate in
`proceedings before the Patent Office). In both cases, the Board stated that the
`question of the real party in interest when a patent has been assigned or licensed is
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`4842-6655-1894v.2
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`KELLEY DRYE & WARREN LLP
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`Patent Trial and Appeal Board
`Page Three
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`analyzed in the context of standing to sue for patent infringement. Bio-Rad Labs.,
`Inc. at 3; Motorola Mobility at 3. Therefore, the fact that WAG may not have
`standing to sue for infringement of the patents-at-issue is directly relevant to the
`question of whether WAG may be heard in the pending IPRs.
`
`WAG has refused to provide any discovery or information, other than to
`deny that it has assigned sufficient rights to affect its standing to sue. WAG’s
`counsel told us in a telephone call on Friday, November 17 (the earliest day
`WAG’s counsel was available) and in an email received Sunday, November 19,
`that the letter filed with the district court should be disregarded because it was a
`statement from a litigation adversary; therefore, despite the fact that it was filed
`with the district court, it was not a sufficient basis to believe that “something useful
`[to the proceeding] will be found.”2 See Garmin Int’l, Inc. v. Cuozzo Speed Techs
`LLC, IPR2012-00001, Paper 26 at 6-7 (March 5, 2013). WAG’s counsel also
`refused to provide copies of the agreements with Woodsford or any information
`concerning Woodsford’s connection to the patents-at-issue or the IPR. Finally,
`WAG’s counsel claimed that we should have realized this information earlier, and
`that our concern was merely a ploy because WAG has raised real-party-in-interest
`questions about petitioner.
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`Of course, whether petitioner should have disclosed an additional party is
`not relevant to the question of whether WAG is an appropriate party to appear
`before this Board. Since this question goes to whether the Board can consider
`pleadings submitted by WAG or whether WAG can appear at oral argument, it is
`of sufficient importance that this Board should order information to be discovered
`
`
`2 WAG’s position is in stark contrast to its arguments to this Board, where it
`argued that an article published in a salacious gossip sheet was sufficient basis to
`support discovery into confidential ownership and corporate information, and to
`this Board’s holding that additional discovery should be provided. See Petitioner
`I.M.L. SLU’s Brief in Opposition to Patent Owner’s Motion for Discovery
`(December 9, 2016) (Paper No. 9) and Conduct of the Proceedings 37 C.F.R. §
`42.5 (April 27, 2017) (Paper No. 13).
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`KELLEY DRYE & WARREN LLP
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`Patent Trial and Appeal Board
`Page Four
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`promptly, despite the timing of the request. WAG of course knew that it had ceded
`“substantial rights” in the patents to Woodsford and knew that Woodsford was
`funding its defense of these patents; had it made proper mandatory disclosures, the
`issue could have been explored earlier.
`
`Petitioner respectfully requests that this Board order WAG to produce to
`petitioner’s counsel, no later than Friday, November 24, 2017, copies of all
`agreements between Woodsford and WAG or its counsel concerning (directly or
`indirectly) the IPRs or the patents-at-issue; documents sufficient to show any
`interest of Woodsford in either of the patents-in-suit and the dates those interests
`were acquired; documents sufficient to show the full extent of WAG’s interest in
`both of the patents-in-suit and any conditions or limitations on those interests,
`together with dates; and documents or a statement disclosing in full any role
`Woodsford has played in funding, supervising, consulting, controlling or
`participating in any way in the pending IPRs.
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`Given the potential significance of this information, and the possibility that,
`as indicated by the filing with the district court, WAG is not a proper party to have
`appeared in these proceedings or that WAG has failed to identify a significant real
`party in interest, petitioner respectfully requests a brief adjournment of the
`upcoming oral argument now scheduled for November 30, 2017. A brief
`adjournment will, with the Board’s permission, allow petitioner to obtain this
`necessary discovery and, if warranted, to request permission to move to dismiss
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`KELLEY DRYE & WARREN LLP
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`Patent Trial and Appeal Board
`Page Five
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`WAG from the proceedings and to expunge all improper WAG filings, potentially
`including the Patent Owner’s Response.
`
`
`Dated: November 20, 2017
`
`/Steven Yovits/
`Steven Yovits
`Reg. No. 48,055
`
`
`
`Lead Counsel for Petitioner
`Kelley Drye & Warren LLP
`333 W Wacker Dr # 2600
`Chicago, IL 60606
`syovits@kelleydrye.com
`Phone: 312-857-7099
`Fax: 312-857-7095
`
`Beth D. Jacob (pro hac vice)
`Kelley Drye & Warren LLP
`101 Park Ave
`New York, NY 10178
`bjacob@kelleydrye.com
`Phone: 212-808-7624
`Fax: 212-808-7897
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`4842-6655-1894v.2
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`CERTIFICATE OF SERVICE
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`I certify that, on November 20, 2017, I caused to be served true and correct
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`copies of the foregoing letter and related exhibits on Patent Owner by filing
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`through the PTAB E2E System and by electronic mail on the following
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`attorneys, as authorized in Patent Owner’s Mandatory Notices:
`
`Ernest D. Buff
`Ernest D. Buff & Associates, LLC
`231 Somerville Road
`Bedminster, NJ 07921
`ebuff@edbuff.com
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`Dated: November 20, 2017
`
`
`
`Ronald Abramson
`David G. Liston
`Ari J. Jaffess
`M. Michael Lewis
`Lewis Baach PLLC
`The Chrysler Building
`405 Lexington Avenue
`New York, NY 10174
`ronald.abramson@LBKMLAW.com
`David.Liston@LBKMLAW.com
`Ari.jaffess@LBKMLAW.com
`Michael.lewis@LBKMLAW.com
`
`
`
`/Steven Yovits/
`Steven Yovits
`Reg. No. 48,055
`Lead Counsel for Petitioner
`Kelley Drye & Warren LLP
`333 W Wacker Dr # 2600
`Chicago, IL 60606
`syovits@kelleydrye.com
`Phone: 312-857-7099
`Fax: 312-857-7095
`
`