`571-272-7822
`
`
` Paper 33
`
`Date Entered: November 21, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`I.M.L. SLU,
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC
`Patent Owner.
`____________
`
`Case IPR2016-01656
`Patent 8,122,141 B2
`Case IPR2016-01658
`Patent 8,364,839 B21
`____________
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`ORDER AUTHORIZING PATENT OWNER TO OPPOSE
`PETITIONER’S UNAUTHORIZED LETTER MOTION FOR
`ADDITIONAL DISCOVERY AND SCHEDULING ARGUMENT
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`1 This Order is to be filed in each case. The parties are not authorized to use
`this style heading in any subsequent papers
`
`
`
`
`
`IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`
`Oral argument on the merits is scheduled for this matter on November 30,
`2017. Our Trial Hearing Order entered on November 15, 2017 also provides for
`argument concerning a Motion For Additional Discovery filed by WAG
`Acquisition, LLC (“Patent Owner”) concerning whether I.M.L. SLU (“Petitioner”)
`has disclosed all real parties-in-interest. Paper 31 (“Trial Hearing Order”), 3.
`On November 20, 2017, without requesting a conference to seek prior
`authorization, Petitioner filed a five page “Letter” advising the panel of
`developments in a separate district court litigation in which Petitioner is not a
`party. Paper 32 (“Letter”). Petitioner’s Letter states that discovery in WAG
`Acquisition L.L.C. v. MultiMedia, LLC, et al. (14-cv-02340) has raised questions
`about whether Patent Owner in this proceeding has ceded rights to Woodsford
`Litigation Funding Limited and Woodsford Litigation Funding (US)
`(“Woodsford”), that strip Patent Owner of constitutional standing to sue. Paper 32
`(“Letter”) (citing WAG Acquisition v. MultiMedia, Letter from Justin T. Quinn,
`Esq., to the Honorable Esther Salas, U.S.D.J.). Petitioner states that “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.” Letter 3. Petitioner requests that we:
`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,
`
`
`
`2
`
`
`
`IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`
`supervising, consulting, controlling or participating in any way in the
`pending IPRs.
`
`Id. at 4.
`Petitioner’s “Letter” requesting that we order Patent Owner to produce
`documents is an unauthorized Letter Motion for Additional Discovery and under
`normal circumstances would be not considered. However, as the Trial Hearing is
`only ten days from now and the Thanksgiving holiday falls in the interim, we
`authorize Patent Owner to file an Opposition to Petitioner’s Letter Motion, not to
`exceed five pages, by Tuesday, November 28, 2017. We will hear argument from
`both parties on Petitioner’s Letter Motion For Additional Discovery at the Trial
`Hearing on November 30, 2017.
`
`ORDER
`In consideration of the above, it is
`ORDERED that Petitioner’s “Letter” filed November 20, 2017 (Paper 32) is
`treated as a Letter Motion For Additional Discovery;
`FURTHER ORDERED that Patent Owner is authorized to file an
`Opposition to Petitioner’s Letter Motion For Additional Discovery up to five pages
`by November 28, 2017; and
`FURTHER ORDERED that we will hear oral argument on Petitioner’s
`Letter Motion For Additional Discovery at the Trial Hearing scheduled for
`November 30, 2017.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`PETITIONER
`Steven Yovits
`Beth Jacob
`KELLEY DRYE & WARREN LLP
`syovits@kelleydrye.com
`bjacob@kelleydrye.com
`
`PATENT OWNER
`
`Ronald Abramson
`Ari Jaffess
`M. Michael Lewis
`LEWIS BAACH KAUFMANN MIDDLEMISS PLLC
`ronald.abramson@lbkmlaw.com
`ari.jaffess@lbkmlaw.com
`michael.lewis@lbkmlaw.com
`
`Ernest Buff
`ERNEST D. BUFF & ASSOCIATES, L.L.C.
`ebuff@edbuff.com
`
`
`
`
`
`
`4
`
`
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