`
`Trials@uspto.gov Paper No. 15
`
`571-272-7822
`Date mailed August 16, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, INC.,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`
`Case IPR2018-00883
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`KHAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Motion for Additional Discovery and
`Authorizing Supplemental Briefing
`37 C.F.R. § 42.5; 42.51(b)(2)
`
`
`
`
`
`
`
`
`IPR2018-00883
`Patent 8,934,535 B2
`
`
`In e-mail correspondence on August 13, 2018, Patent Owner Realtime
`Adaptive Streaming, LLC requested a conference call to discuss
`supplemental briefing regarding real-party-in-interest (“RPI”) issues in light
`of the Federal Circuit’s decision in Applications in Internet Time v. RPX
`Corp., 2017-1698, -1699, -1701, 2018 WL 3625165 (Fed. Cir. July 9, 2018).
`In connection with the RPI issues, Patent Owner also requested authorization
`to file a motion for additional discovery. A conference call was held on
`August 15, 2018 before Judges Cherry, Baer, and Khan.
`I.
`On the call, the parties indicated that they had largely reached
`agreement on the supplemental briefing and a variety of discovery issues.
`The parties agreed that supplemental briefing was warranted. Petitioner also
`informed us that it would be voluntarily providing discovery1 related to
`certain requests from Patent Owner shortly. However, the parties still
`disputed two issues related to the scope of the discovery. In particular, the
`parties disputed (1) whether the discovery should be limited to U.S. Patent
`No. 8,934,535 (“the ʼ535 Patent”), the patent challenged in this case, and (2)
`whether the discovery should include information related to Patent Owner’s
`parent entity. The parties indicated they were close to an agreement on the
`second of these issues (i.e., whether discovery related to Patent Owner’s
`parent entity would be provided), but not the first (whether the discovery
`should be limited to the ʼ535 Patent). Patent Owner, thus, asked permission
`to file a motion for additional discovery for information related to other
`
`
`1 Petitioner indicated that the parties would file with the Board an agreed
`upon draft Protective Order in advance of providing discovery.
`2
`
`
`
`
`
`IPR2018-00883
`Patent 8,934,535 B2
`
`
`patents owned by Patent Owner and its parent. Petitioner opposes such a
`motion.
`For the reasons stated below, we grant-in-part and deny-in-part Patent
`Owner’s requests. We grant Patent Owner’s request for supplemental
`briefing and set the schedule for such briefing below. We deny Patent
`Owner’s request to file a motion for additional discovery.
`II.
`We first address the request for authorization to file a motion for
`additional discovery. Additional discovery is permitted when the moving
`party shows it “is in the interests of justice.” 37 C.F.R. § 42.51(b)(2)(i). We
`consider several factors in determining whether additional discovery is in the
`interests of justice. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case
`IPR2012-00001, slip op. at 6–7 (Paper 26) (PTAB Mar. 5, 2013)
`(precedential). Those factors include whether the requested discovery: 1) is
`based on more than a mere possibility of finding something useful; 2) seeks
`the other party’s litigation positions or the basis for those positions; 3) seeks
`information that reasonably can be generated without the discovery requests;
`4) is easily understandable; and 5) is overly burdensome to answer. Id. A
`request may be overly burdensome if it puts a burden on meeting the time
`schedule of inter partes review. Id.
`Here, the timing of Patent Owner’s request weighs heavily against
`granting it. Normally, discovery in an inter partes review does not start until
`a trial is instituted. See Office Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,761 (Aug. 14, 2012) (“To streamline the proceedings, the rules and
`Scheduling Order provide a sequenced discovery process upon institution of
`the trial.”). Patent Owner’s request for pre-institution discovery, therefore,
`
`
`
`3
`
`
`
`IPR2018-00883
`Patent 8,934,535 B2
`
`
`must be closely scrutinized in light of the normal schedule for discovery.
`See Wavemarket, Inc. D/B/A/ Location Labs v. Locationet Sys., Ltd., Case
`IPR2014-00920, Paper No. 10 (PTAB Nov. 25, 2014) (denying
`authorization to file pre-institution motion requesting additional discovery
`on privity).
`The deadline for deciding whether to institute inter partes review is
`October 12, 2018, three months after receiving a preliminary response.
`35 U.S.C. § 314(b). As of the date of the conference call, less than two
`months remain before this deadline. If we authorized a motion for additional
`discovery, the parties agreed that no supplemental briefing could take place
`until after the motion was decided and any additional discovery was
`provided. We doubt whether enough time remains to allow for full briefing
`and discovery and still meet our statutory deadline. Patent Owner has not
`persuasively explained why such delay would be in the interests of justice.
`Moreover, any prejudice to Patent Owner is limited because, if we decide to
`institute trial, Patent Owner may renew its request for authorization for
`additional discovery after institution.
`Further, Patent Owner has not persuaded us that, beyond speculation,
`the proposed additional discovery will be productive. See Garmin, Case
`IPR2012-00001, slip op. at 6 (Paper 26) (The party requesting discovery
`should already be in possession of a threshold amount of evidence tending to
`show beyond speculation that something useful will be discovered.). Indeed,
`the parties both acknowledged that the discovery Petitioner has already
`agreed to provide may be sufficient and may moot the necessity of
`supplemental briefing altogether. Thus, at this point, Patent Owner can only
`
`
`
`4
`
`
`
`IPR2018-00883
`Patent 8,934,535 B2
`
`
`speculate that something useful may be discovered if we grant Patent
`Owner’s motion for additional discovery.
`For the foregoing reasons, we deny Patent Owner’s request for
`authorization to file a motion for additional discovery. We note that,
`because our decision rests partly on timing issues involved in allowing a
`motion for additional discovery during this pre-institution phase, Patent
`Owner may have the opportunity to renew its request for such a motion post-
`institution if the Board decides to institute trial.
`III.
`As explained above, the need for supplemental briefing on RPI issues
`may be mooted by Petitioner’s voluntary discovery. However, if the parties
`deem such briefing to be necessary, and in view of the Federal Circuit’s
`recent decision in Applications in Internet Time, 2018 WL 3625165, we
`authorize supplemental briefing on the RPI issues consistent with the
`instructions set out in our Order below.
`IV.
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Request for Authorization to file
`Motion for Additional Discovery is denied;
`FURTHER ORDERED that Patent Owner may file a supplemental
`brief on the real-party-in-interest issue, limited to 10 pages, no later than
`August 27, 2018; and
`FURTHER ORDERED that Petitioner may file a response to Patent
`Owner’s supplemental brief on the real-party-in-interest issue, limited to 10
`pages, no later than September 6, 2018.
`
`
`
`
`5
`
`
`
`IPR2018-00883
`Patent 8,934,535 B2
`
`
`
`
`
`
`For PETITIONER:
`Lionel M. Lavenue
`C. Brandon Rash
`James D. Stein
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`lionel.lavenue@finnegan.com
`brandon.rash@finnegan.com
`james.stein@finnegan.com
`
`Ashraf A. Fawzy
`Jonathan Stroud
`Unified Patents Inc.
`afawzy@unifiedpatents.com
`jonathan@unifiedpatents.com
`
`For PATENT OWNER:
`William P. Rothwell
`Kayvan B. Noroozi
`Joel P.N. Stonedale
`Noroozi P.C.
`william@noroozipc.com
`kayvan@noroozipc.com
`joel@noroozipc.com
`
`Neil A. Rubin
`Kent Shum
`Russ August & Kabat
`nrubin@raklaw.com
`kshum@raklaw.com
`
`
`
`6
`
`
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