Trials@uspto.gov
`571–272–7822
`
`
`
`
`Paper 64
`Entered: February 6, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`VILOX TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00044
`Patent 7,302,423 B2
`____________
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Authorization for a Motion for Additional Discovery
`37 C.F.R. §§ 42.20(b) and 42.51(b)(2)
`
`
`
`
`
`571–272–7822
`
`
`
`
`Paper 64
`Entered: February 6, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`VILOX TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00044
`Patent 7,302,423 B2
`____________
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Authorization for a Motion for Additional Discovery
`37 C.F.R. §§ 42.20(b) and 42.51(b)(2)
`
`
`
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`INTRODUCTION
`I.
`
`On January 9, 2019, Judges Medley, Weinschenk, and Hamann held a
`
`conference call with counsel for Unified Patents Inc. (“Petitioner”) and
`counsel for Vilox Technologies, LLC (“Patent Owner”). A court reporter
`was present on the conference call, and Patent Owner has filed an
`unredacted (Paper 59) and a redacted (Paper 62) copy of the court reporter’s
`transcript. We cite to the redacted version of the transcript (Paper 62,
`“Trans.”) herein. The purpose of the conference call was to address Patent
`Owner’s desire for additional discovery, which Patent Owner previously
`raised during the oral hearing. Paper 63, 47–50.
`
`II. DISCUSSION
`
`Patent Owner seeks authorization to file a motion for additional
`discovery “as to the real parties in interest in this case, including Sal[es]force
`and any other similarly situated members” of Petitioner. Trans. 7. Patent
`Owner claims that in September 2018 it learned of certain statements
`attributed to Petitioner and made to a third-party that caused Patent Owner to
`question whether others also should be named as real parties in interest. Id.
`at 9–11. Patent Owner claims that these purported statements were “that
`Vilox really wasn’t the type of company that falls within [Petitioner’s]
`interest or [its] purview” and “if [it] had known that Vilox was an operating
`company or something to that effect, then it would not have brought the
`IPR.” Id. Patent Owner argues that in light of these statements “perhaps
`this [case] has not just been a unilateral decision by Unified to move forward
`consistent with whatever their regular business model would be.” Id. at 10.
`
`In late September 2018, Patent Owner states it conferred with
`Petitioner about these purported statements, and the parties agreed to
`
`2
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`voluntary discovery relating to real parties in interest. Id. at 12–13. Patent
`Owner states that it propounded discovery requests on November 9, 2018
`and that Petitioner provided certain documents in response on December 5,
`2018. Id. at 13. Patent Owner argues that Petitioner failed to produce
`requested emails of which Patent Owner was aware, and, thus, “maybe there
`[a]re other documents that [Petitioner] did not produce.” Id. at 13–14.
`
`Patent Owner also cites the Federal Circuit’s Applications in Internet
`Time, LLC v. RPX Corporation, 897 F.3d 1336 (Fed. Cir. 2018) decision to
`justify additional discovery. E.g., id. at 9–10. In particular, Patent Owner
`argues that like in Applications in Internet Time, which found that additional
`real parties in interest discovery may be warranted, “Salesforce was a
`member and had a relationship with Unified Patents, . . .[a]nd Salesforce
`would certainly stand to benefit from an IPR filed by Unified Patents in this
`particular case.” Id. at 15.
`
`Importantly, Patent Owner does not “expect this [request for
`additional discovery] to have any impact on the final decision, either the
`merits or the timing of that decision.” Id. at 16. Rather, as Patent Owner
`confirmed, “Patent Owner is seeking additional discovery . . . relating to
`[real parties in interest] for future aspects in estoppel, and Patent Owner is
`not in some way putting forward that there should be some type of bar to the
`current proceeding.” Id. at 17.
`
`Petitioner opposes Patent Owner’s request. Petitioner argues that
`Patent Owner’s request comes too late, after the October 22, 2018 close of
`discovery and the December 11, 2018 oral hearing. Id. at 18–19. Petitioner
`also disputes that the purported statements occurred as characterized by
`Patent Owner. Id. at 20–21. Petitioner also argues that the purported
`
`3
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`statements, even if accurate, do not demonstrate good cause or satisfy the
`interest of justice standard. Id. at 20.
`
`III. ANALYSIS
`
`Discovery in an inter partes review proceeding is more limited than in
`district court patent litigation, as Congress intended our proceedings to
`provide a more efficient and cost-effective alternative to such litigation.
`H. Rep. No. 112-98 at 45–48 (2011). A party seeking discovery beyond
`what is expressly permitted by our rules must establish that such additional
`discovery is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5); see
`also 37 C.F.R. § 42.51(b)(2) (“The moving party must show that such
`additional discovery is in the interest of justice.”).
`
`The Board has identified five factors (the “Garmin Factors”) to be
`considered in determining whether additional discovery is in the interest of
`justice. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-
`00001, slip op. at 6–7 (PTAB Mar. 5, 2013) (Paper 26) (precedential)
`(“Garmin”). The first of these factors is that there should be more than
`“speculation that something useful will be uncovered. ‘Useful’ in th[is]
`context does not mean merely ‘relevant’ and/or ‘admissible.’” Id. at 7.
`Rather, “‘useful’ means favorable in substantive value to a contention of the
`party moving for discovery.” Id.
`
`Here, Patent Owner seeks additional discovery as to real parties in
`interest. Patent Owner repeatedly offers, however, that the additional
`discovery would not have any impact on the merits of the final decision.
`Trans. 7, 16. Rather, Patent Owner seeks the additional discovery for future
`purposes outside of this proceeding (i.e., “for future aspects in estoppel”).
`Id. at 17.
`
`4
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`Additional discovery that would not impact, or reach the merits of, the
`
`final decision does not have substantive value as to any of the contentions in
`this proceeding. Such additional discovery would not be “useful.” See
`Garmin, Paper 26, at 7. Simply put, it is not in the interest of justice to
`allow for additional discovery that Patent Owner represents would not be
`useful to this proceeding.
`
`We also find Patent Owner’s reliance on Applications in Internet Time
`unavailing. That case differs factually from this proceeding in important
`ways. In particular, in Applications in Internet Time, that Patent Owner
`argued that those proceedings were time barred because a purported
`unnamed real party in interest had been sued more than one year beforehand.
`Applications in Internet Time, 897 F.3d at 1338. The requested additional
`discovery as to real parties in interest in Applications in Internet Time thus
`was directed to an issue in those proceedings. Here, in contrast, Patent
`Owner does not argue that this proceeding is time barred, nor even that
`Patent Owner has sued Salesforce. Trans. 16–17.
`
`Accordingly, that Patent Owner only seeks additional discovery for
`potential, future purposes is dispositive to our determination that Patent
`Owner cannot show that the requested additional discovery is in the interest
`of justice. We also note that Patent Owner failed to explain why it cannot
`request discovery in the context of a relevant, future proceeding or civil
`action as to whether others should be bound by our final decision. 35 U.S.C.
`§ 315(e).
`
`Accordingly, it is:
`
`ORDERED that Patent Owner’s request for authorization to file a
`motion seeking additional discovery is denied.
`
`5
`
`
`
`IPR2018-00044
`Patent 7,302,423 B2
`
`PETITIONER:
`
`David M. O’Dell
`David L. McCombs
`Thomas Kelton
`John Russell Emerson
`Scott Cunning
`HAYNES AND BOONE, LLP
`david.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`thomas.kelton.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`scott.cunning.ipr@haynesboone.com
`
`Jonathan Stroud
`Roshan Mansinghani
`UNIFIED PATENT INC.
`jonathan@unifiedpatents.com
`roshan@unifiedpatents.com
`
`
`PATENT OWNER:
`
`John K. Harrop
`harrop@vapatent.com
`
`
`6
`
`
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