`571-272-7822
`
`
`
`
`
`
`Paper 21
`Entered: May 10, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01257 (Patent 8,552,978 B2)
` Case IPR2018-01258 (Patent 8,441,438 B2)1
`
`____________
`
`
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.51(b)(2)
`
`
`
`
`
`
`1 The parties are not authorized to use this style of caption.
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`
`On May 8, 2019, a conference call was conducted with counsel for the
`
`parties. During the call, we reminded Patent Owner that email requests for
`
`conference calls should be limited to a brief statement of the nature of its
`
`request, without attorney argument. See, e.g., Metrics, Inc. v. Senju
`
`Pharmaceutical Co., Ltd., Case IPR2014-01041, slip op. at 2 (PTAB Sept. 9,
`
`2014) (Paper 11) (“Th[e] email shall also fairly describe the nub of the
`
`dispute, providing the facts and authority that relate to the dispute, without
`
`attorney argument.”).
`
`Patent Owner requests authorization for supplemental briefing and
`
`additional discovery that it believes is warranted by the Board’s recent
`
`designation of certain decisions as precedential, particularly Ventex Co., Ltd.
`
`v. Columbia Sportswear North America, Inc., Case IPR2017-00651, slip op.
`
`(PTAB Jan. 24, 2019) (Paper 148) (precedential). That case, and others
`
`recently designated as precedential, relates to issues regarding real parties in
`
`interest and privies in the context of 35 U.S.C. §§ 312(a)(2) and 315(b).
`
`According to Patent Owner, Ventex considered a situation similar to facts in
`
`these proceedings, in which other accused infringers have a pre-existing
`
`contractual relationship that may compel a conclusion that they are unnamed
`
`real parties in interest or privies with Petitioner in the context of these
`
`proceedings.
`
`Petitioner opposes the request, contending that it is both untimely and
`
`substantively defective. According to Petitioner, Ventex was an application
`
`of principles set forth by the Federal Circuit in Applications in Internet Time,
`
`LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018) (“AIT”). Because AIT
`
`was decided by the Federal Circuit in July 2018, well before the Board
`
`decided Ventex or designated Ventex precedential, Petitioner contends that
`
`2
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`Patent Owner reasonably should have known of those principles and
`
`presented its argument sooner. Petitioner also contends that any contractual
`
`relationship with unnamed parties is different in character than the
`
`contractual relationship at issue in Ventex.
`
`No court reporter was present on the call. The panel determines that it
`
`would be productive to have the parties’ arguments in writing and on the
`
`record of these proceedings. Accordingly, we authorize Patent Owner to file
`
`a motion for additional discovery pursuant to 37 C.F.R. § 42.51(b)(2). In its
`
`motion, Patent Owner should address the factors set forth in Garmin Int’l,
`
`Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7
`
`(PTAB Mar. 5, 2013) (Paper 26). In addition, the motion should address the
`
`timeliness of Patent Owner’s request, particularly as related to the Board’s
`
`recent designation of decisions as precedential and how the facts of Ventex
`
`relate to the facts at issue here. Petitioner is authorized to oppose the
`
`motion, and Patent Owner is authorized to reply, as set forth below. The
`
`parties may submit nontestimonial evidence that elucidates the factual
`
`relationship with Ventex.
`
`
`
`It is
`
`ORDERED that Patent Owner is authorized to file a motion for
`
`additional discovery as set forth above, limited to ten pages, by May 21,
`
`2019;
`
`FURTHER ORDERED that Petitioner is authorized to file an
`
`opposition to Patent Owner’s motion, limited to ten pages, by May 28, 2019;
`
`and
`
`3
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`
`FURTHER ORDERED that Patent Owner is authorized to file a reply
`
`to Petitioner’s opposition, limited to three pages, by June 3, 2019.
`
`
`
`4
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`PETITIONER:
`
`Matthew A. Smith
`Andrew S. Baluch
`SMITH BALUCH LLP
`smith@smithbaluch.com
`baluch@smithbaluch.com
`
`PATENT OWNER:
`Jay P. Kesan
`DIMURO GINSBERG PC-DGKEYIP GROUP
`jkesan@dimuro.com
`
`
`
`
`5
`
`
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