Trials@uspto.gov
`571-272-7822
`
`
` Paper 37
`
`Date Entered: December 15, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`I.M.L. SLU, and DUODECAD IT SERVICES LUXEMBOURG S.A R.L.,
`ACCRETIVE TECHNOLOGY GROUP, INC., ICF TECHNOLOGY, INC.,
`and RISER APPS LLC.,1
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC
`Patent Owner.
`____________
`
`Case IPR2016-01656
`Patent 8,122,141 B2
`Case IPR2016-01658
`Patent 8,364,839 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`1 DUODECAD IT SERVICES LUXEMBOURG S.À R.L, et al. are present
`by virtue of the joinder of IPR2017-01179 to IPR2016-01658.
`
`
`
`

`

`Case IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`
`Based on Petitions filed by I.M.L. SLU (“IML”), a trial in IPR2016-01656
`and IPR2016-01658 was instituted on February 27, 2016. Paper 11 in each
`proceeding (“Decision to Institute”). On October 5, 2017, IPR2017-01179 brought
`by Duodecad IT Services Luxembourg S.À R.L., Accretive Technology Group,
`Inc., ICF Technology, Inc., and Riser Apps LLC (“Duodecad”) was terminated and
`joined to IPR2017-01658. As a result, IML and Duodecad are Petitioners in
`IPR2016-01658. IML is the sole Petitioner in IPR2016-01656.
`On November 15, 2017, we entered a Trial Hearing Order in which we
`indicated that, consistent with our previously entered Scheduling Order, we would
`conduct a consolidated hearing on the merits of each inter partes review on
`November 30, 2017. Papers 31 and 29 (“Trial Hearing Order”), 22. We also stated
`that we would conduct a separate hearing to address an outstanding Motion for
`Discovery on information concerning Petitioner’s real parties-in-interest. Id. at 3.
`On November 20, 2017, without requesting a conference to seek prior
`authorization, counsel for IML filed a five page “Letter” advising the panel of
`developments in a separate district court litigation in which Petitioner is not a
`party. Papers 32 and 30 (“Letter Motion”). IML requested that we authorize
`discovery of information about the relationship between WAG Acquisition LLC
`(“Patent Owner”) and Woodsford Litigation Funding Limited and Woodsford
`Litigation Funding (US) (“Woodsford”) to allow IML to address whether Patent
`Owner had ceded rights, such that Patent Owner is stripped of its constitutional
`standing. Letter, 3. On November 21, 2017, we authorized Patent Owner to file a
`response to Petitioner’s Letter Motion and stated we would hear argument at the
`November 30, 2017 discovery motion hearing. Papers 33 and 31.
`
`
`2 Unless paper numbers are the same in each proceeding, paper numbers are
`provided for IPR2017-01656 and IPR2016-01658, respectively.
`2
`
`
`
`

`

`Case IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`
`On November 29, 2017, IML sent the Board e-mail correspondence with a
`proposed motion attached seeking to withdraw the Petitions in IPR2016-01656 and
`IPR2016-01658. We responded by e-mail that the hearing would take place on
`November 30, 2017 and that we would take up the matter of withdrawal at the
`discovery hearing.
`The first issue addressed at the discovery hearing on November 30, 2017
`was IML’s Motion to Withdraw. As the sole Petitioner in IPR2016-01656, IML
`indicated it is seeking to withdraw the Petition and end IPR2016-01656; having not
`objected to the joinder of Duodecad in IPR2016-01658, IML clarified that it seeks
`only to withdraw its participation in IPR2016-01658.3 Transcript of Discovery
`Hearing held on Nov. 30, 2017 Papers 36 and 34 (“Discovery Hr’g. Tr.”) 7:1–12,
`8:1–11. We noted that, other than in the context of a settlement, the statutory
`scheme and our implementing rules do not have explicit provisions for
`withdrawing a petition. Discovery Hr’g. Tr. 9:9–12:16. See, 35 U.S.C. §313; 37
`C.F.R. § 42. We also noted that our rules allow a petitioner to request adverse
`judgment, although adverse judgment could have estoppel implications. Id. at
`10:15–11:16, see 35 U.S.C. § 315(e), 37 C.F.R. 42.73(b), (d). In addition, we
`heard argument from Duodecad’s counsel concerning the implications for
`Duodecad of terminating IML’s involvement in IPR2016-01658, including the
`possible determination that on the current record IML failed to demonstrate that it
`has named all real parties-in-interest. Discovery Hr’g. Tr. 14:7–15:17, 18:12–17.
`We also heard responsive argument from Patent Owner. Id. at 15:18–18:9.
`
`
`3 Although we instituted on Duodecad’s petition in IPR2017-01179, which was
`substantially identical to that filed by IML in IPR2016-01658, Duodecad’s petition
`would have been time barred under 35 U.S.C. § 315(b), but for the joinder
`provisions of 35 U.S.C. § 315(c).
`
`
`
`3
`
`

`

`Case IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`
`We also heard argument on Patent Owner’s Motion for Additional
`Discovery. Papers 23 and 21 (“PO Mot. For Add. Discovery”). Although Patent
`Owner’s discussion of its Motion for Additional Discovery delved, to some extent,
`into the merits of the issues, the discussion of the relationship between IML and at
`least one other entity, CoolVision, was necessary to put the discovery sought into
`context. Discovery Hr’g. Tr. 22:4–29:8. Counsel for Patent Owner also stated that
`he had been advised by “e-mail yesterday . . . that there’s not going to be any
`discovery.” Id. at 29: 15:21). Arguing that Patent Owner’s “[discovery] motion is
`moot if we are not here” (id. at 30:21), IML’s counsel stated that she was not
`authorized to answer specific questions (Discovery Hr’g. Tr. 34:1) about the
`subject matter and that IML’s further actions depend upon what options are open to
`IML in light of this order (id. at 32:6–12).4
`Initially Patent Owner stated that it does not oppose Petitioner’s withdrawal.
`Id. at 13:18–20. However, on December 1, 2017, Patent Owner sent an e-mail to
`the Board requesting (i) a conference to seek authorization to file a written
`opposition to Petitioner’s request for leave to withdraw, (ii) to move to require
`Petitioner to respond to discovery with items we identified at page 7 of the
`transcript of our conference call on November 3, 20175 including “who has been
`directing the proceedings, who participated in preparing the petition, who has been
`funding it, how it has been funded, are the same lawyers involved, who the
`Petitioner's counsel is in this case taking direction from,” and (iii) to renew its
`
`
`4 In this Order we avoid discussing specific discovery details because this portion
`of the hearing was held in closed session and is sealed. As indicated in this Order,
`the parties are instructed to review the transcript and advise us of any subject
`matter should be redacted before the transcript is made public.
`5 The transcript of our call on November 3, 2017 has not been made of record in
`either IPR2016-01656 or IPR2016-01658.
`4
`
`
`
`

`

`Case IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`request for authorization to file a motion to terminate IPR2016-01656 and
`IPR2016-01658 as time barred as to all Petitioners.
`IML availed itself of the procedures of this Board and has therefore
`consented fully to its jurisdiction. Our earlier orders make clear that Patent Owner
`has established a threshold need for additional discovery on the issue of whether
`IML has disclosed all real parties-in-interest to these proceedings. See, Papers 13
`and 12. IML acknowledged during the discovery hearing that Patent Owner’s
`description of the relationship between IML and CoolVision is basically correct.
`Discovery Hr’g. Tr. 35:13–36:5. Patent Owner’s Motion for Additional Discovery
`contends that the redacted documents produced thus far, the stipulation filed as
`confidential Exhibit 2007, and a retracted offer for an additional stipulation are
`insufficient to satisfy the requirements of identifying all parties that control and
`direct IML in this proceeding or have other important interests in its outcome. PO
`Mot. For Add. Discovery, 2–4. Patent Owner has proposed a request for admission
`and a number of multi-part interrogatories (Ex. 2008) that IML contends seek far
`reaching discovery into claims of ownership of companies that are neither IML nor
`the purported real parties-in-interest, as well as other details, including the
`locations of employees, for periods including several years before the IPR was
`filed and before IML was served in related litigation. Papers 24 and 22 (“Opp. to
`Mot. For Add. Discovery”). IML also states that most of the information sought in
`interrogatories 7(a)–7(c) and 8(a)–8(c) has already been provided. Id. at 5. We
`agree that some of Patent Owner’s interrogatories are over-reaching and seek
`information that is not targeted to the real parties-in-interest issues before us.
`Others of Patent Owner’s discovery requests, in particular those directed to
`establishing the chain of ownership and the roles played by certain personnel, are
`within the appropriate scope of this proceeding.
`
`
`
`5
`
`

`

`Case IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`
`In consideration of the above, by December 21, 2017, IML is required to file
`a motion for adverse judgment or to answer the following discovery requests:
`Request for Admission 1 & interrogatories 1, 2(a)–(f), 2(i), 3(a)–(f); 4, 7(a)–(c),
`and 8(a)–(c). In the event that IML files a Motion for Adverse Judgment, Patent
`Owner is authorized to file an Opposition to the Motion for Adverse Judgement up
`to five pages not later than January 5, 2018.
`We defer any briefing on the status of Duodecad in IPR2016-01658, pending
`a decision on a motion for adverse judgment by IML, should such a motion be
`filed.
`
`During the Discovery Hearing, the parties elected not to present additional
`argument concerning IML’s Letter seeking additional discovery on Patent Owner’s
`relationship with Woodsford. As Patent Owner points out, the full chain of title to
`the involved patents is a matter of public record and shows ownership vested solely
`in WAG. Papers 34 and 32 (PO Opp. To Letter Mot. For Discovery”), 2. Patent
`Owner also argues that the existence of its litigation funder is publicly known, that
`the funder has no separate interest apart from the expectation of gain from
`participating in the Patent Owner’s licensing or enforcement income, and that
`financing infringement litigation does not make Woodsford a co-owner of the
`patents. Id. at 4 (citing Luminara Worldwide, LLC v. Liown Electronics Co. Ltd.,
`814 F.3d 1343, 1351 (Fed. Cir. 2016)).
`We are guided by the following principles (“the Garmin factors”) first
`articulated in Garmin Int’l., Inc. v. Cuozzo Speed Techs LLC, Case IPR2012-
`00001, slip op. 6–7 (PTAB Mar. 3, 2015): (1) whether there are more than a mere
`possibility and a mere allegation that something useful might be found, (2) whether
`the discovery merely seeks early identification of an opponent’s litigation position,
`(3) whether the party requesting the discovery can obtain the information through
`
`
`
`6
`
`

`

`Case IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`other means, (4) whether the discovery requests and instructions are clear, and (5)
`whether the discovery requests are overly burdensome
`In view of the fact that the relationship between Patent Owner and
`Woodsford is already known publically and is the subject of further discovery in
`the district court, we are not persuaded that IML has demonstrated that its request
`meets the Garmin standards for the limited discovery available in inter partes
`review.
`
`ORDER
`In consideration of the above, it is
`ORDERED that IML is authorized to file a Motion for Adverse Judgment
`not later than December 21, 2017;
`FURTHER ORDERED that Patent Owner is authorized to file an
`Opposition to any Petitioner Motion for Adverse Judgment by January 5, 2017;
`FURTHER ORDERED that Patent Owner’s Motion for Additional
`Discovery is GRANTED-IN-PART, and that if IML does not file a Motion for
`Adverse Judgment by December 21, 2017, IML is required to provide full,
`complete, and comprehensive answers to Patent Owner’s Request For Admission
`1, and Interrogatories 1, 2(a)–(f), 2(i), 3(a)–(f); 4, 7(a)–(c), and 8(a)–(c) by
`December 20, 2017;
`FURTHER ORDERED that IML’s Letter Motion for Additional Discovery
`is DENIED; and
`FURTHER ORDERED that Petitioner and Patent Owner review the sealed
`transcript, meet and confer, and by January 10, 2018 identify to the Board what, if
`any, portions of the sealed Discovery Hearing transcript should be redacted in a
`public version.
`
`
`
`
`7
`
`

`

`Case 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
`
`
`
`
`
`
`8
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`