Trials@uspto.gov
`571-272-7822
`
`Paper 31
`Date: November 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION and CAVIUM, LLC,1
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`____________
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge FISHMAN.
`
`Opinion Dissenting filed by Administrative Patent Judge SIU.
`
`FISHMAN, Administrative Patent Judge.
`
`DECISION
`
`1 Cavium, Inc., which filed petitions in Cases IPR2018-00400 and IPR2018-00403
`was joined as a petitioner in IPR2018-00226 and IPR2018-00234. According to
`updated mandatory notices filed in the captioned proceedings, Cavium, Inc. has
`now been converted to Cavium, LLC. See, e.g., IPR2018-00226, Paper 28.
`
`

`

`
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`On Motion for Additional Discovery
`37 C.F.R. §§ 42.20 and 42.51(b)(2)
`
`INTRODUCTION
`I.
`Alacritech, Inc. (“Patent Owner”) filed a Motion for Additional Discovery
`on October 11, 2018 in each of these cases. IPR2018-00226, Paper 31; IPR2018-
`00234, Paper 26 (collectively “Motion” or “Mot.”). Intel Corp. (“Petitioner”) filed
`an Opposition to Patent Owner’s Motion on October 19, 2018. IPR2018-00226,
`Paper 22; IPR2018-00234, Paper 28 (collectively “Opposition” or “Opp.”). As
`noted supra, Cavium, LLC has been joined as a party to these proceedings and,
`thus, Intel Corp. and Cavium, LLC are referred to herein jointly as either
`“Petitioner” or “Petitioners.”
`For the reasons discussed below, we grant Patent Owner’s Motion.
`
`
`Additional Discovery
`A.
`Under the Leahy-Smith America Invents Act (“AIA”), discovery is available
`for the deposition of witnesses submitting affidavits or declarations and for “what
`is otherwise necessary in the interest of justice.” 35 U.S.C. § 316(a)(5). Our
`corresponding rules allow for routine discovery providing: “[c]ross examination of
`affidavit testimony prepared for the proceeding is authorized within such time
`period as the Board may set.” 37 C.F.R. § 42.51(b)(1)(ii).
`In addition to routine discovery, our rules allow for additional discovery,
`further providing: “[t]he moving party must show that such additional discovery is
`in the interests of justice.” 37 C.F.R. § 42.51(b)(2)(i). As the movant, Patent
`Owner bears the burden of establishing that the request is in the interest of justice.
`We generally consider five factors (the “Garmin factors”) in determining whether
`the interests of justice would be served by granting additional discovery requests.
`2
`
`
`

`

`
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`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). In Garmin, we held that the
`following factors (the so-called “Garmin factors”) are important in determining
`whether additional discovery is necessary in the interest of justice:
`1. More Than A Possibility And Mere Allegation — The mere
`possibility of finding something useful, and mere allegation that
`something useful will be found, are insufficient to demonstrate that the
`requested discovery is necessary in the interest of justice. The party
`requesting discovery should already be in possession of evidence
`tending to show beyond speculation that in fact something useful will
`be uncovered.
`2. Litigation Positions And Underlying Basis — Asking for the other
`party’s litigation positions and the underlying basis for those positions
`is not necessary in the interest of justice. The Board has established
`rules for the presentation of arguments and evidence. There is a proper
`time and place for each party to make its presentation. A party may not
`attempt to alter the Board’s trial procedures under the pretext of
`discovery.
`3. Ability To Generate Equivalent Information By Other Means —
`Information a party can reasonably figure out or assemble without a
`discovery request would not be in the interest of justice to have
`produced by the other party. In that connection, the Board would want
`to know the ability of the requesting party to generate the requested
`information without need of discovery.
`4. Easily Understandable Instructions — The questions should be easily
`understandable. For example, ten pages of complex instructions for
`answering questions is prima facie unclear. Such instructions are
`counter-productive and tend to undermine the responder’s ability to
`answer efficiently, accurately, and confidently.
`5. Requests Not Overly Burdensome To Answer — The requests must
`not be overly burdensome to answer, given the expedited nature of Inter
`Partes Review. The burden includes financial burden, burden on
`human resources, and burden on meeting the time schedule of Inter
`Partes Review. Requests should be sensible and responsibly tailored
`according to a genuine need.
`
`3
`
`
`

`

`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`Id.
`
`
`
`
`Real Parties-In-Interest, Privies, And Time Bar
`B.
`The AIA requires that “[a] petition filed under section 311 may be
`considered only if . . . the petition identifies all real parties in interest.” 35 U.S.C.
`§ 312(a). In addition, “[a]n inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the date on which the
`petitioner, real party in interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Our
`corresponding rules allow any “person who is not the owner of a patent” to file a
`petition unless “[t]he petition requesting the proceeding is filed more than one year
`after the date on which the petitioner, the petitioner’s real party-in-interest, or a
`privy of the petitioner is served with a complaint alleging infringement of the
`patent.” 37 C.F.R. § 42.101.
`
`
`II. DISCUSSION
`To simplify the discussion below we cite to papers in Case IPR2018-00226
`unless otherwise identified. Similar or identical arguments are presented in Case
`IPR2018-00234.
`
`
`Summary Of Patent Owner’s Position
`A.
`Patent Owner’s Motion requests additional discovery “regarding the real
`parties in interest (‘RPIs’) to this petition—namely, Dell, Inc., and . . . the Wistron
`entities and the CenturyLink entities that PO sued for infringement in the Eastern
`District of Texas (collectively ‘Defendant Customers’).” Mot. 1. Patent Owner
`broadly characterizes the documents sought as “documents memorializing the
`
`4
`
`
`

`

`
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`timing, nature and scope of the established indemnification and defense
`coordination relationships between the Petitioners and Defendant Customers.”
`Mot. 6.
`Patent Owner argues the documents sought are critical because the filing
`date of the Petition in these cases is more than a year after the Defendant
`Customers were served with a complaint alleging infringement. Mot. 5–6.
`Therefore, if the Defendant Customers are in fact RPIs or privies of Petitioner, this
`Petition may be barred under 35 U.S.C. § 315(b). Thus, Patent Owner contends
`additional discovery is needed because “[t]wo recent Federal Circuit cases2 have
`changed the PTAB’s required RPI analysis.” Mot. 2. Patent Owner asserts that, in
`AIT, the Federal Circuit held that determining a real party in interest relationship
`“requires a ‘flexible approach’” and requires the Board to “consider . . . the entirety
`of the record” and “to ‘meaningfully examine’ the relationship between the
`entities.” Mot. 3.
`Patent Owner argues all five Garmin factors weigh in favor of granting the
`motion. Mot. 5–10. We consider these arguments below.
`
`
`Summary Of Petitioner’s Position
`B.
`Petitioner opposes the Motion and argues: the Motion is untimely (Opp. 2–
`4); Dell, Inc. is not a real party-in-interest in these cases (Opp. 4–5); and the
`Garmin factors weigh against granting the Motion (Opp. 5–10). Petitioner further
`argues AIT and Bungie did not change the law to require the Board grant additional
`
`
`2 Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir.
`July 9, 2018), reh’g en banc denied, Nos. 2017-1698, 2017-01699, 2017-1701
`(Fed. Cir. Oct. 23, 2018) (“AIT”) and Worlds, Inc. v. Bungie, Inc., 903 F.3d 1237
`(Fed. Cir. Sept. 7, 2018) (“Bungie”).
`
`5
`
`
`

`

`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`discovery and cites Wi-Fi One3 as supporting its position that additional discovery
`is not mandated. Opp. 8–9.
`
`
`
`
`Analysis
`C.
`AIT Clarifies The Required Analysis Regarding RPI And Privity
`1.
`We agree with Petitioner that neither AIT nor Bungie changed the law to
`mandate that the Board unconditionally grant additional discovery. Our rules stand
`unchanged requiring that a moving party must demonstrate that the requested
`additional discovery would be in the interests of justice and further provide that the
`Board may specify other conditions for such discovery. See 37 C.F.R.
`§ 42.51(b)(2). We agree that the Board has the discretion to grant or deny a
`motion for additional discovery in an inter partes review based on whether the
`moving party has shown that the requested discovery is necessary in the interest of
`justice.
`However, AIT does substantively address the Board’s evaluation of RPI and
`privity issues. Prior to AIT, our analysis of RPI and privity issues had frequently
`focused principally on an entity’s control, or opportunity to control, a proceeding
`before the Board. In earlier related cases decided by this panel, this panel analyzed
`arguments relating to the alleged RPI status of Dell (one of the Defendant
`Customers), based principally on whether Dell controlled or had the opportunity to
`control that inter partes review proceeding. See, e.g., Case IPR2017-01392, Paper
`11, 21–25; see also Case IPR2017-01393, Paper 8, 16–20.
`
`
`3 Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1338-41 (Fed. Cir. 2018).
`6
`
`
`

`

`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`The Federal Circuit in AIT specifically ruled that a similar focus by the
`Board in AIT was unduly narrow. AIT, 897 F.3d at 1345. Specifically, the Court
`held,
`
`
`
`[T]he Board’s determination that Salesforce was not a real party in
`interest under § 315(b) relied on an
`impermissibly narrow
`understanding of the common-law meaning of the term, was not based
`on consideration of the entirety of the administrative record, and
`seemingly misallocated the burden of proof. Any one of these errors
`might warrant vacatur—together, they compel it. . . . The Board did
`not consider critical evidence proffered by AIT. Nor did it adequately
`explain why it rejected certain of AIT’s common law theories,
`particularly where RPX bore the burden of proving its petitions were
`not time-barred under § 315(b).
`AIT, 897 F.3d at 1356. In a concurring opinion, Judge Reyna noted that the
`majority addressed real party-in-interest issues but wrote separately to emphasize
`that a similar broad analysis should apply to issues of privity. Id. at 1358 (Reyna,
`J., concurring). Judge Reyna specifically pointed out that, “[w]hile ‘control’ over a
`proceeding may be germane to a form of privity,” “[p]rivity between parties does
`not hinge on any single proceeding.” Id. at 1361–62 (Reyna, J., concurring).
`Instead, Judge Reyna suggests, “[t]he substantive legal relationship inquiry focuses
`on the legal obligations between the parties, not between a party and a
`proceeding.” Id. at 1361 (Reyna, J., concurring). Judge Reyna further suggests
`that determining the existence of a privity relationship requires a broader inquiry
`and finds “[a] common character of these relationships is that the two parties share
`a high degree of commonality of proprietary or financial interest.” Id. at 1362
`(Reyna, J., concurring). Judge Reyna identifies an indemnification relationship as
`an exemplary relationship that could form a privity relationship. Id. (Reyna, J.,
`concurring).
`
`7
`
`
`

`

`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`It is clear that AIT changed prior practices of the Board such that our review
`of real party-in-interest and privity issues must extend beyond a narrow view
`focused solely on control or the opportunity to control a proceeding before the
`Board.
`
`
`
`
`The Motion Is Timely
`2.
`We are not persuaded by Petitioner that the Motion is untimely. Petitioner
`argues Patent Owner was in possession of the agreement that governs Petitioner’s
`indemnification obligations to Dell since April 6, 2017. Opp. 2. Petitioner further
`argues that, in August 2018, Patent Owner requested and was denied the same
`additional discovery in related earlier cases. Id. Petitioner further contends Patent
`Owner did not raise the issue with Petitioner until September 18, 2018. Id. Thus,
`Petitioner asserts the Motion is untimely. Still further, Petitioner argues that, if the
`additional discovery were granted, “there is no provision in the scheduling order
`for any additional briefing by Patent Owner. Id. at 3.
`We are unpersuaded that the delay in requesting additional discovery was
`substantial or prejudiced Petitioner. AIT, changing the Board’s practice in review
`of RPI and privity issues, was decided in July 2018. Patent Owner’s earlier
`(August 2018) request for the same additional discovery in related cases was
`denied because, in those earlier cases (filed in May of 2017), Dell had already been
`joined as a party and there was no 315(b) bar issue either at the time of filing of
`those earlier petitions or later when Dell was joined as a party. See, e.g., IPR2017-
`01391, Paper 67, 2–3. Although it is true that Patent Owner could have requested
`this additional discovery for this case at that time (August 2018), we perceive no
`prejudice to Petitioner in the added month delay (from the August 2018 conference
`
`8
`
`
`

`

`
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`call to the later September 2018 conference call). Petitioner’s Reply to Patent
`Owner’s Response in this case is not due until December 5, 2018.
`Regarding Petitioner’s concern that there is no provision in the scheduling
`order for any additional briefing by Patent Owner, we can order changes to the
`schedule as needed by the parties to address issues relating to RPI, privity, and
`§ 315(b) time-bar.
`Lastly, Petitioner argues that, contrary to Patent Owner’s contention that its
`motion is not untimely because RPI is a “jurisdictional issue,” “[p]ermitting
`additional discovery is not jurisdictional.” Opp. 3 (citing Mot. 9). Petitioner’s
`argument is a non-sequitur. We do not understand Patent Owner to argue that
`additional discovery is a jurisdictional issue but, instead, that a time bar arising
`from a real party-in-interest relationship may present a jurisdictional issue that
`cannot be waived. See Mot. 9.
`For the above reasons, we are persuaded Patent Owner’s Motion is timely
`filed. Should either party require additional time for any further briefing that
`might be ordered, such additional time may be requested and, for good cause, may
`be granted.
`
`
`Even If Dell Is Not An RPI, Dell May Be A Privy Of Petitioner
`3.
`We are not persuaded by Petitioner’s argument that Dell is not a real party-
`in-interest in this proceeding. Even granting Petitioner’s assertion, Patent Owner’s
`Motion seeks documents that relate, inter alia, to indemnification and joint defense
`agreements between Petitioner and the Defendant Customers, which includes Dell.
`Such documents may aid the Board in evaluating whether there is privity between
`Petition and any of the Defendant Customers (entities arguably time-barred under
`
`9
`
`
`

`

`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`315(b)). Petitioner admits to at least partially indemnifying Dell in its motion to
`intervene in Patent Owner’s litigations against Dell. Ex. 2053, 9.
`
`
`
`
`4. Weighing the Garmin Factors
`a.
`Garmin Factor 1
`Garmin factor 1 requires that Patent Owner show more than mere
`allegations/speculations that the requested documents exist and would be useful.
`Patent Owner argues the discovery sought is clearly useful in that it would
`aid the Board in performing the broader analysis of RPI and privity required by
`AIT to determine the nature of the relationship between Petitioners and the
`Defendant Customers. Mot. 5–6. Patent Owner suggests that the Board already
`found the existence of such an indemnification is readily admitted on the record.
`Mot. 6–7 (citing Case IPR2017-01405, Paper 71, 3). However, we note the cited
`paper refers to an admission in a conference call including Intel (Petitioner in
`IPR2017-01405)—Cavium (joined as a party here) did not participate in the
`conference call discussed in the cited paper. Regardless, Cavium (joined as a party
`here) filed a Motion To Intervene in litigation against Dell, which Patent Owner
`has filed on the record in this case as Exhibit 2055. Therein, Cavium admits that it
`intervened, in part, based on its indemnification obligation to Dell (through its
`subsidiary QLogic). See, e.g., Ex. 2055, 5. Thus, the existence of documents
`relating to indemnification between Dell and Intel and between Dell and Cavium
`(at least indirectly through QLogic) is admitted.
`Petitioner argues Patent Owner has not met its burden of showing, beyond
`mere speculation, that anything useful would be produced by the requested
`
`10
`
`
`

`

`
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`additional discovery. Opp. 4–5. Petitioner cites Ricoh4 in support of its position
`that “[i]ndemnification and joint defense alone does not mandate additional
`discovery.” Opp. 5–7.
`We are persuaded Garmin factor 1 weighs in favor of granting Patent
`Owner’s Motion. Petitioner’s admissions of the existence of an indemnification
`relationship present more than mere speculation/allegations that written
`agreements exist defining the metes and bounds of the indemnification
`relationship. Further, in view of the Federal Circuit’s holding in AIT, the Board
`needs to perform a broader review of such relationships to determine RPI and
`privity issues. Production of the requested documents would be useful to the
`Board in understanding the nature and timing of those business and legal
`relationships and, thus, will aid the Board in determining whether there may be a
`time-bar under § 315(b) because of the relationships between Petitioners and
`Defendant Customers (including at least Dell).
`Although we may agree that the Court’s holding in AIT may impose a
`significant burden on the Board to review such relationships in numerous cases,
`this does not present a reason to limit the required review into RPI and privity
`issues.
`
`
`b.
`
`Garmin Factor 2
`
`
`4 Ricoh Ams. Corp. v. MPHJ Tech. Inv., LLC, Case IPR2015-01178,
`Paper 8, 2 (PTAB Aug. 6, 2015). (“[A]ll litigation where a . . . retailer is a party
`and the manufacturer is not raises issues of indemnification . . . . If we allowed
`discovery on the real party in interest in every such situation, our timely and
`efficient review procedure would be lost.”).
`11
`
`
`

`

`
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`Garmin factor 2 provides that requesting an opposing party’s “litigation
`positions and the underlying basis for those positions is not necessary in the
`interest of justice.”
`Patent Owner argues the request does not target Petitioners’ litigation
`positions but, instead, seeks “documents that will establish the timing, nature and
`scope of these ‘readily admitted’ and established relationships, including the rights,
`interests and obligations between the Petitioners and Defendant Customers as
`required by recent precedent.” Mot. 8.
`Petitioner does not address this factor other than to suggest that the
`requested documents may be privileged and/or confidential. Opp. 1–2, 9–10.
`For the reasons asserted by Patent Owner, we are not persuaded that this
`factor weighs against granting the Motion.
`
`
`Garmin Factor 3
`c.
`Garmin factor 3 relates to whether the requested documents are obtainable
`by Patent Owner through other means. Patent Owner asserts the information
`cannot otherwise be obtained and that the documents are exclusively within the
`control of Petitioners and Defendant Customers. Mot. 8–10. Patent Owner
`contends multiple attempts to obtain these documents in related litigations and
`other IPRs have been unavailing. Id.
`Petitioner does not address this factor, and we determine that this factor
`weighs in favor of granting the Motion.
`
`
`12
`
`
`

`

`
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`Garmin Factors 4 And 5 - Easily Understood And Not Burdensome
`d.
`Patent Owner argues the requests are narrowly tailored and simple. Mot. 10.
`Petitioner argues the requests are “expansive and vague, seeking information
`that would be unduly burdensome to obtain, is highly confidential, and in many
`cases privileged.” Opp. 9. In particular, Petitioner argues Dell has been a
`customer of Intel for more than 20 years” and, thus, “[t]he request could
`encompass a large number of documents unrelated to this IPR.” Opp. 10.
`We find the request (Ex. 2400) to be sufficiently clear. We note that the
`request specifically states: “If Petitioners find the meaning of any term in any
`Request for Production unclear, Petitioners should assume a reasonable meaning,
`state what the assumed meaning is, and produce documents on the basis of that
`assumed meaning.” Ex. 2400, 1. Furthermore, the request explicitly contemplates
`that Petitioner shall provide a privilege log for any document that Petitioner
`withholds on the basis of privilege, and we, accordingly, do not understand the
`request to require production of privileged documents or attorney work-product.
`See id. at 1–2. Moreover, confidential information may be filed under seal in
`accordance with our rules. See 37 C.F.R. §§ 42.14, 42.54, 42.55, 42.56.
`Upon consideration of Petitioner’s contention regarding the scope of
`documents covering a long-term relationship with Dell, we limit the scope of
`Patent Owner’s Request for Production No. 4 to documents that relate to
`Alacritech’s patents, to these proceedings, or to indemnification or defense
`agreements having relevance to Alacritech’s patents or to these proceedings. We
`find that Patent Owner’s Requests for Production Nos. 1–3 are sufficiently focused
`such that we are not persuaded that any further narrowing is required.
`Lastly, Petitioner argues the protective order in this case “does not provide
`sufficient confidentiality for the requested documents.” Opp. 10.
`
`13
`
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`

`

`
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`To the extent necessary, the parties may meet and confer and propose a
`different protective order to afford the requisite protection for confidential
`information in this proceeding.
`We determine this factor weighs in favor of granting the Motion.
`
`
`Conclusion Weighing Garmin Factors
`e.
`For the above reasons, we determine the Garmin factors weigh in favor of
`granting Patent Owner’s Motion.
`
`
`
`
`
`
`14
`
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`

`

`
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`III. ORDERS
`
`It is
`ORDERED that the Patent Owner’s motion for additional discovery is
`granted subject to the limitations set forth above.
`
`PETITIONER
`Garland Stephens
`garland.stephens@weil.com
`
`Adrian Percer
`adrian.percer@weil.com
`
`Jeremy Lang
`jason.lang@weil.com
`
`
`
`PATENT OWNER
`
`
`Jim Glass
`jimglass@quinnemanuel.com
`
`Jospeh Paunovich
`joepaunovich@quinnemanuel.com
`
`Brian Mack
`brianmack@quinnemanuel.com
`
`15
`
`
`

`

`Paper 36
`Date: November 19, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION and CAVIUM, LLC,5
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`____________
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`SIU, Administrative Patent Judge, dissenting
`
`
`I respectfully disagree with the Majority’s position that Patent Owner has
`demonstrated that additional discovery in this matter should be granted in the
`interests of justice.
`
`
`5 Cavium, Inc., which filed petitions in Cases IPR2018-00400 and IPR2018-00403
`was joined as a petitioner in IPR2018-00226 and IPR2018-00234. According to
`updated mandatory notices filed in the captioned proceedings, Cavium, Inc. has
`now been converted to Cavium, LLC. See, e.g., IPR2018-00226, Paper 28.
`
`

`

`
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`
`
`Patent Owner requests “discovery . . . regarding the real parties in interest
`(‘RPIs’) to this petition” in the form of production of “documents memorializing
`the timing, nature and scope of the established indemnity and defense coordination
`relationships between the Petitioners and Defendant Customers, including their
`respective rights, interests and obligations in the underlying [Eastern District of
`Texas] Cases and IPR proceedings.” Paper 31, 1. Patent Owner further argues that
`such discovery is based on “more than a ‘mere possibility’ or a ‘mere allegation
`that something useful [to the proceeding] will be found.” Paper 31, 5 (citing
`“Garmin Factor 1”). However, Patent Owner does not indicate specific
`information beyond that of a “mere possibility” or “mere allegation” that such
`additional discovery would result in something useful. For example, Patent Owner
`states that the “discovery sought is clearly useful” because in the event that
`something useful is, in fact, produced, “the instant IPR [will be] jurisdictionally
`time-barred under Section 315(b) as it was filed more than one year after service of
`complaints on the Defendant Customers.” Paper 31, 6. In other words, Patent
`Owner alleges that if something useful is obtained through additional discovery
`(e.g., a document stating unequivocally that alleged parties are real parties in
`interest), then the instant IPR may be dismissed. This begs the question, however,
`whether at this stage of the proceeding, there exists more than a “mere allegation”
`or “mere possibility” that something useful will be produced in the first place. I do
`not identify any specific information in the record that would lead one to suspect
`beyond a “mere possibility” that something useful would be produced.
`Patent Owner argues that documents that “show that the Defendant
`Customers have an established relationship” “exist” and that “Petitioners have
`‘readily admitted’ and made ‘of record’ their indemnity relationships with the
`Defendant Customers.” Paper 31, 6–7. In other words, Patent Owner argues that
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`there is more than a “mere possibility” that something useful will be produced by
`obtaining a document already known to exist. While I would agree that there is
`more than a “mere possibility” of obtaining a document that is known to exist upon
`further discovery of that document, I cannot agree that there is more than a “mere
`possibility” of producing something useful in the production of a document that is
`already known to exist. At best, such production would be redundant to the
`information already available in the record and would accomplish no more than
`producing documents that are not necessary to our determination of RPI in this
`matter.
`In support of the contention that there is more than a “mere possibility” or
`“mere allegation” that additional discovery of documents “memorializing the
`timing, nature and scope of the established indemnity and defense coordination
`relationships between the Petitioners and Defendant Customers” would supposedly
`be useful, Patent Owner states that “[t]wo recent Federal Circuit cases6 have
`changed the PTAB’s required RPI analysis.” Paper 31, 1–2.
`In particular, Patent Owner argues that, in RPX, the Federal Circuit held that
`determining a real party in interest relationship “requires a ‘flexible approach’” and
`requires the Board to “consider . . . the entirety of the record” and “to
`‘meaningfully examine’ the relationship between the entities.” Paper 31, 3. Even
`assuming that Patent Owner is correct that the Federal Circuit held that the Board
`must consider the entire record to “meaningfully examine” the issue of real parties
`in interest, Patent Owner does not adequately explain how additional discovery is
`necessary in the interests of justice in order for the Board to meaningfully examine
`
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`6 Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir.
`July 9, 2018) (“RPX”) and Worlds, Inc. v. Bungie, Inc., 2018 WL 4262564, at *7
`(Fed. Cir. Sept. 7, 2018) (“Bungie”)
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`the entire record. Nor does it logically follow that instructions for “meaningfully”
`examining the issue of real parties in interest would indicate more than a “mere
`possibility” that something useful will be produced with additional discovery in
`this case.
`The Majority takes the position that, in RPX, the Federal Circuit supposedly
`held that the PTAB must not take “an impermissibly narrow understanding” of the
`meaning of the terms “real party in interest” and “privity” and that the PTAB must
`“consider critical evidence proffered” by Patent Owner (i.e., AIT). Maj. Dec. 7.
`Presumably, the Majority relies on this statement in RPX to support the allegation
`that additional discovery of documents pertaining to the RPI issue in this case is
`based on more than a “mere possibility” or “mere allegation” that something useful
`will be produced. I cannot agree with the Majority on this point because, in my
`view, the panel not taking “an impermissibly narrow understanding” of the
`meaning of the term “real party in interest” or “privity” does not require additional
`discovery. Nor does the panel taking a broader “understanding” of the meaning of
`the term “real party in interest” or “privity” provide more than a “mere possibility”
`that something useful will be produced with additional discovery. In fact, the
`probability/possibility that something useful will be produced with additional
`discovery is wholly unrelated at all to whether the panel takes “an impermissibly
`narrow understanding” of terms or not.
`The Majority also states that “Petitioner’s admissions of the existence of an
`indemnification relationship present more than mere speculation/allegations that
`written agreements exist.” Maj. Dec. 11. However, in my view, the question is
`whether there is more than a “mere possibility” that something useful will be
`produced with additional discovery of an indemnification agreement. Again, this
`document is already known to exist. While the Majority states that the document
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`may “defin[e] the metes and bounds of the indemnification relationship” (id.), the
`Majority does not clearly explain a rational basis for why there is more than a
`“mere possibility” that any of these alleged definitions of “metes and bounds,” if
`any, would be something useful to the present matter. In my view, there may be, at
`best, a “mere possibility” of such utility but no more (and, most likely, far less). I
`would not consider this Garmin factor met under these circumstances.
`Patent Owner argues that in Bungie, the PTA