Filed: May 21, 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 No. 8,552,978
`____________________
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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 No. 8,552,978
`____________________
`
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`TABLE OF CONTENTS
`
`I. BACKGROUND ................................................................................................. 1
`II. ARGUMENT ..................................................................................................... 2
`A. Patent Owner’s Request is Timely ........................................................... 2
`B. Ventex Is Controlling Here ....................................................................... 4
`C. The Garmin Factors Weigh in Favor of Granting Additional Discovery 8
`III. CONCLUSION ............................................................................................... 10
`
`
`
`
`
`
`
`
`i
`
`
`
`
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Application in Internet Time, LLC v. RPX Corp.,
` 897 F.3d 1336 (Fed. Cir. 2018) ............................................................................. 3
`
`Nissan N.A., Inc. v. Diamond Coating Techs., LLC,
` IPR2014-01546, Paper 10 (April 21, 2015) .......................................................... 3
`
`Square, Inc. v. Protegrity Corp.,
` CBM2015-00014, Paper 40 (April 19, 2016) ....................................................... 3
`
`Taylor v. Sturgell,
` 533 U.S. 880 (2008); ............................................................................................. 7
`
`Ventex Co., Ltd., v. Columbia Sportswear N.A., Inc.,
` IPR2017-00651 (Jan. 24, 2019) ................................................................... passim
`
`
`Statutes
`
`35 U.S.C. § 315(b) ............................................................................................ 1, 2, 4
`
`
`
`
`
`ii
`
`
`
`
`
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`LIST OF EXHIBITS
`
`Declaration of Dr. Gary L. Blank
`
`Curriculum Vitae of Dr. Gary L. Blank CV
`
`Claim Construction Opinion and Order (Doc. 117), Cywee
`Group Ltd. v. Samsung Elecs. Co., Ltd., C.A. No. 2:17-CV-
`00140-WCB-RSP (E.D. Tex., July 9, 2018)
`
`
`
`Expert Declaration of Dr. Joseph LaViola, Ph.D., in Support
`of Patent Owner Response
`
`Curriculum Vitae of Dr. Joseph LaViola, Ph.D.
`
`Order (Doc. 153), Cywee Group Ltd. v. Samsung Elecs. Co.,
`Ltd., C.A. No. 2:17-CV-00140-WCB-RSP (E.D. Tex., Aug.
`14, 2018)
`
`Memorandum Opinion (Doc. 55), CyWee Group Ltd. v.
`Motorola Mobility LLC, C.A. No. 17-780-RGA (D. Del.,
`Dec. 21, 2018)
`
`File History of U.S. Application No. 10/396,439
`
`File History of U.S. Application No. 12/413,722
`
`File History of U.S. Application No. 13/367,058
`
`Expert Declaration of Dr. Joseph LaViola, Ph.D., in Support
`of Motion to Amend
`
`File History of U.S. Provisional Application 61/292558
`
`Google’s Responses to CyWee’s Requests for Production,
`CyWee Group Ltd. v. Google, Inc., No. 1:18-cv-00571 (D.
`Del.) (Sep. 4, 2018)
`
`iii
`
`
`
`
`
`2014
`
`2015
`
`2016
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`Google/Samsung 2011-2012 Mobile Application
`Distribution Agreement (Android)
`
`CyWee Group, Ltd. v. Samsung Elecs. Co. Ltd., Ltd., C.A.
`No. 2:17-CV-00140-WCB-RSP, Doc. 1-1 (Exhibit A,
`Infringement Claim Chart)
`
`Web Print-Out “Introducing PAX: the Android Networked
`Cross-License Agreement,” available at
`<https://blog.google/outreach-initiatives/public-
`policy/introducing-pax-android-networked-cross-license-
`agreement/>
`
`
`
`
`
`
`
`iv
`
`
`
`
`
`Pursuant to the Board’s Order on the Conduct of the Proceeding (Paper 20)
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`entered on May 10, 2019 (the “Order”), Patent Owner CyWee Group, Ltd. (“Patent
`
`Owner” or CyWee”) submits the following Motion for Additional Discovery
`
`(“Motion”). Patent Owner seeks discovery directed to Petitioner Google LLC’s
`
`(“Petitioner” or “Google”) failure to name all Real Parties in Interest to its Petition
`
`(Paper 1) in the present IPR, including at least Samsung Electronics Group, Ltd.
`
`(“Samsung”), LG Electronics Inc. (“LG”), and ZTE (USA), Inc. (“ZTE”).
`
`I.
`
`BACKGROUND
`
`CyWee has brought infringement actions in various district courts against
`
`Google, Samsung, LG, ZTE, Huawei, Motorola, and HTC relating to the patents-
`
`at-issue in this IPR and related IPR2018-01258 (collectively, the “Google IPRs”).
`
`Google filed its Petition on June 14, 2018, more than one year after Patent Owner
`
`served Samsung with an infringement complaint on February 23, 2017, and LG on
`
`June 6, 2017. Samsung and LG were by then time-barred by 35 U.S.C. § 315(b).
`
`Patent Owner had raised concerns of RPI in its oppositions to the joinder
`
`petitions filed by Samsung, LG, ZTE, and Huawei (collectively, the “Joinder
`
`Petitioners”). However, after becoming aware of the Board’s designation of Ventex
`
`Co., Ltd., v. Columbia Sportswear N.A., Inc., IPR2017-00651 (Jan. 24, 2019) as
`
`precedential, Patent Owner contacted opposing counsel on April 26, 2019, within
`
`ten days of the designation of Ventex, to discuss the possibility of additional
`
`
`
`1
`
`
`
`
`
`discovery and briefing. The parties did not reach agreement, and Patent Owner
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`promptly requested a call with the Board on May 1. The Board held the call on
`
`May 8 to determine the appropriateness of additional discovery and briefing on the
`
`issue of RPI. On May 10, the Board issued its Order authorizing this Motion.
`
`CyWee seeks the following additional discovery: (1) agreements between
`
`Google and any of the Joinder Petitioners relating to the Android Operating
`
`System (“OS”) and/or devices utilizing Android, including any licensing, cross-
`
`licensing, supplier, manufacturing, joint defense, joint interest, and indemnification
`
`agreements; (2) any communications between Google and any of the Joinder
`
`Petitioners regarding the Google IPRs, CyWee, U.S. Patents 8,441,438 and
`
`8,552,978, and/or any of the “Related Matters” disclosed in Google’s Petition
`
`(Paper 1 at 5-6); and (3) deposition of witness(es) with knowledge of Google’s
`
`Android licensing practices and any of the agreements listed above.
`
`II. ARGUMENT
`
`A. Patent Owner’s Request is Timely
`
`It is the Petitioner’s burden “to demonstrate that its petitions are not time-
`
`barred under § 315(b) based on a complaint served on a real party in interest more
`
`than a year earlier.” Ventex, IPR2017-00651, Paper 148 at 4-5 (quoting Worlds Inc.
`
`v. Bungie Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)). Identification of RPIs is a
`
`non-waivable statutory requirement. Ventex, IPR2017-00651, Paper 73 at 3, n. 2.
`
`
`
`2
`
`
`
`
`
`Nonetheless, Patent Owner’s request for additional discovery is timely. The
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`Board designated Ventex as precedential on April 16, 2019. That case newly
`
`applied the Federal Circuit’s decision in Application in Internet Time, LLC v. RPX
`
`Corp., 897 F.3d 1336 (Fed. Cir. 2018) (“AIT”). Ventex clarified that the Board
`
`would now accept as evidence of an RPI relationship certain types of facts that it
`
`had previously declined to consider, such as indemnification agreements. See, e.g.,
`
`Nissan N.A., Inc. v. Diamond Coating Techs., LLC, IPR2014-01546, Paper 10 at 7
`
`(April 21, 2015). As a precedential decision, Ventex, unlike previous decisions, is
`
`dispositive in cases based on similar facts. See, e.g., Square, Inc. v. Protegrity
`
`Corp., CBM2015-00014, Paper 40 at 6 (April 19, 2016) (non-precedential
`
`decisions are not binding on the Board). Upon reviewing Ventex, Patent Owner
`
`revisited the RPI issue in light of the close parallels between the facts of that case
`
`to those in the present matter. As discussed above, Patent Owner then acted
`
`promptly in contacting opposing counsel and scheduling a call with the Board. In
`
`Ventex, discovery and supplemental briefing was granted after oral argument had
`
`occurred; Ventex, IPR2017-00651, Paper 148 at 2-3, whereas this request comes
`
`months before oral argument. Accordingly, Patent Owner has timely raised the
`
`non-waivable issue of Petitioner’s failure to identify time-barred RPIs based on the
`
`new precedent. Id., Paper 73 at 3, n. 2.
`
`
`
`3
`
`
`
`
`
`B. Ventex Is Controlling Here
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`The purpose of including the terms “real party in interest” and “privy” in §
`
`315 is two-fold: (1) to ensure that third parties who have a sufficiently close
`
`relationship with petitioners are bound by the outcome of instituted IPRs; and (2)
`
`to safeguard patent owners from belated and repetitive administrative attacks by
`
`related parties. AIT, 897 F3d at 1350. In Ventex, petitioner—a
`
`textile
`
`manufacturing company that had been sued by Columbia Sportswear for
`
`manufacturing an allegedly infringing “Heatwave Material”—brought IPRs against
`
`Columbia to invalidate the patents on which it had been sued for infringement. The
`
`Board found that Ventex had failed to disclose Seirus—a clothing company that
`
`sold products incorporating Ventex’s “Heatwave Material”—as an RPI and/or
`
`privy to its petition. Ventex, IPR2017-00651, Paper 148 at 16. The Board reiterated
`
`that RPI and privity are separate inquiries and that a finding of either will result in
`
`termination of the IPR if the RPI/privy would have time-barred the petition under §
`
`315(b). Id. at 5. Ventex’s petition was therefore dismissed as time-barred because
`
`Seirus had been served with Columbia’s infringement complaint more than one
`
`year prior to the date on which Ventex filed its petition.
`
`Real Party in Interest. “Determining whether a party is a ‘real party in
`
`interest’ demands a flexible approach that takes into account both equitable and
`
`practical considerations, with an eye toward determining whether the non-party is
`
`
`
`4
`
`
`
`
`
`a clear beneficiary that has a preexisting established relationship with the
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`petitioner.” AIT, 897 F3d at 1351 (emphasis added). In Ventex, the Board found
`
`that Seirus was an RPI to Ventex’s petition for several reasons. Ventex and Seirus
`
`had an existing business relationship dating back to 2013. Ventex, IPR2017-00651,
`
`Paper 148 at 7. The relationship between Ventex and Seirus was governed by
`
`contractual agreements including an “Exclusive Manufacturing Arrangement” and
`
`a “Supplier Agreement,” which required Ventex to indemnify Seirus. Id., Paper
`
`148 at 7. The subject of those agreements concerned the “Heatwave Material,”
`
`which was the subject of Columbia’s infringement action against Ventex and was a
`
`component of the accused product in the action against Seirus. Id. at 8. Ventex and
`
`Seirus therefore had an exclusive business relationship as to the product accused of
`
`infringing the Columbia patents. Id. at 7. Thus, both Ventex and Seirus were
`
`incentivized to invalidate the claims of Columbia’s patents. Id. at 8. Ventex was
`
`also aware that Columbia had been threatening litigation against its customers,
`
`including Seirus. Id. The Board there found that these factors, considered together,
`
`showed that Seirus had a considerable interest in Ventex’s pursuit to invalidate the
`
`Columbia patents. Id. at 9. That the claims challenged by Ventex’s IPRs did not
`
`perfectly overlap with those at issue in the Columbia infringement actions did not
`
`change that Seirus stood to benefit from the invalidation of Columbia’s patents. Id.
`
`
`
`5
`
`
`
`
`
`Similar facts establish the Joinder Petitioners as RPIs to the Google IPRs.
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`Google has had a long, established business relationship with each of the Joinder
`
`Petitioners since as early as 2009 as the supplier of the Android OS.1 The Android
`
`OS is a significant component of CyWee’s infringement claims against each of
`
`those parties at district court. See, e.g., Ex. 2015. At least Samsung and LG are
`
`currently or have been parties to agreements with Google relating to Android. For
`
`example, both Samsung and LG are currently members of the “Android Networked
`
`Cross-License” (“PAX”), which creates a defense group for Google and members
`
`of the “Android Ecosystem.” Ex. 2016. Patent Owner is also aware of the “Mobile
`
`Application Distribution Agreement” (“MADA”) between Samsung and Google.
`
`Ex. 2014. The MADA relates to the distribution of Android applications. Id. The
`
`MADA contains indemnification provisions for both parties relating to the Android
`
`applications and/or devices utilizing Android. Id. at §§ 11.1-11.2. The MADA was
`
`in force from 2011-2012, so while it is no longer active, its existence suggests the
`
`presence of other indemnification agreements between Google and the Joinder
`
`Petitioners relating to Android devices. Both PAX and MADA relate directly to the
`
`Android OS, which “forms at least a part of the [] product[s] accused of infringing
`
`the [patents-at-issue] in the [district court litigations].” Ventex, Paper 73 at 6.
`
`
`
`
`
`
`6
`
`1 Specifically, the first Android-based Samsung phone was released in June of
`
`
`
`
`
`
`
`Google appears to be the exclusive supplier of OS to the Joinder Petitioners,
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`as all of their infringing smartphones utilize Android. Google knew of CyWee’s
`
`infringement suits at least as of the time it filed its Petition because it identified
`
`those cases as “Related Matters” in its disclosure of mandatory notice information.
`
`Paper 1 at 5-6. All of the claims being challenged by Google here are also being
`
`asserted by CyWee in the infringement actions against the Joinder Petitioners.
`
`These facts, taken together, indicate that the Joinder Petitioners have considerable
`
`common interests in Google’s efforts to invalidate the patent-at-issue in this IPR
`
`and are RPIs to the IPR, warranting additional discovery on the matter. Ventex,
`
`IPR2017-00651, Paper 148 at 9.
`
`Privity. Privity exists where, inter alia, there is a pre-existing substantive
`
`legal relationship between the parties or the non-party acts as a proxy for the
`
`named party to relitigate the same issues. Taylor v. Sturgell, 533 U.S. 880, 894-94
`
`(2008); Ventex, IPR2016-00651, Paper 148 at 12. In Ventex, a pre-existing
`
`substantive legal relationship was found based on the Supplier and Exclusive
`
`Manufacturing Agreements, which related directly to the product accused of
`
`infringing the patents-at-issue. Id. at 12-13. The Board found that Ventex also
`
`acted as a proxy for Seirus to relitigate the validity of the patents. Id. at 13-15. This
`
`was supported by the fact that Ventex and Seirus obstructed discovery on the
`
`
`
`7
`
`
`
`
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`nature of the agreements. Id. at 14. Moreover, the parties had an aligned interest in
`
`invalidating the claims subject to the Ventex IPRs. Id. at 15.
`
`
`
`Here, the same factors suggest that Google is in privity with at least
`
`Samsung and LG. PAX and the MADA prove a pre-existing substantive legal
`
`relationship between Google and Samsung and/or LG, and the subject of these
`
`agreements relates directly to the products accused of infringing the patent-at-issue
`
`here. Evidence also suggests that Google is acting as a proxy for the Joinder
`
`Petitioners to relitigate validity. Notably, Google asserts Bachmann as a central
`
`reference in this IPR. Bachmann was first raised by Samsung in its invalidity
`
`contentions at district court but was subsequently dropped as a reference. Thus,
`
`Google is acting as a proxy to allow Samsung to relitigate prior art that it
`
`previously abandoned. Like in Ventex, Google has made efforts to obscure the
`
`nature of any agreements between it and Samsung and other Android device
`
`manufacturers by refusing to produce such agreements despite tacitly admitting
`
`that they exist. Ex. 2013, Responses to RFPs 3, 4, and 5. And Google and the
`
`Joinder Petitioners have aligned interests in invalidating CyWee’s Patent claims.
`
`C. The Garmin Factors Weigh in Favor of Granting Additional Discovery
`
`In Garmin, the Board enumerated five factors for determining whether
`
`additional discovery is warranted: (1) whether the requesting party has presented
`
`more than a possibility and mere allegation that something useful will be
`
`
`
`8
`
`
`
`
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`discovered; (2) whether the requests seek the other party’s litigation positions and
`
`the underlying bases for those positions; (3) the requesting party’s ability to
`
`generate equivalent information by other means; (4) whether the discovery
`
`requests are easily understandable; and (5) whether the requests that are overly
`
`burdensome to answer. Garmin, IPR2012-00001, Paper 26 at 6-7. Here, all five
`
`factors weigh in favor of granting CyWee’s request for additional discovery.
`
`Factor (1). Google supplies the Android OS, which “forms at least a part of
`
`the [] product[s] accused of infringing the [patents] in the [district court
`
`litigations].” Ventex, IPR2017-00651, Paper 73 at 6. Agreements almost certainly
`
`exist to govern this relationship. As has been discussed above, PAX is but one
`
`agreement between Google and at least some of the Joinder Petitioners. The
`
`MADA, while expired, is indicative of Google’s licensing and indemnification
`
`practices and evidences that other similar agreements likely exist, as does the fact
`
`that Google refused to produce its agreements and communications with Samsung
`
`in district court. The existence of an agreement alone also tends to support that
`
`further communications regarding the subject of that agreement and the district
`
`court cases in general are potentially relevant in considering the privity inquiry. Id.
`
`Factor (2). The discovery that Patent Owner seeks does not pertain to
`
`Google’s litigation positions, only to its relationships with the Joinder Petitioners.
`
`The discovery is directed to agreements that relate to the products accused of
`
`
`
`9
`
`
`
`
`
`infringing the patent-at-issue and to the timing, structure, and amounts of payments
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`under those agreements. Ventex, IPR2017-00165, Paper 148 at 12-13; Id., Paper 73
`
`at 6. The discovery requests are not intended to target litigation positions, but to
`
`some extent they may be incidentally captured given the intertwined nature of
`
`Google and the Joinder Petitioners. See Id., Paper 73 at 6 (communications about
`
`agreements and litigation in general are potentially relevant to privity inquiry).
`
`Factor (3). CyWee did not have adequate opportunity to explore this
`
`discovery in district court litigation. CyWee requested discovery regarding
`
`agreements pertaining to the Android OS from Google at district court, but Google
`
`refused to produce any such agreements. Ex. 2013, Responses to RFPs 3, 4, and 5.
`
`All of the related district court actions have now been stayed, so CyWee can no
`
`longer use those cases as an avenue for generating the information by other means.
`
`Factor (4). The requested discovery is targeted and easily understandable.
`
`CyWee agrees to keep its requests clear to allow Google to respond efficiently,
`
`accurately, and confidently. Garmin, IPR2012-00001, Paper 26 at 6-7.
`
`Factor (5). All of the requested documents and information are within
`
`Google’s control, and Google has ample resources and ability to locate and
`
`produce documents.
`
`III. CONCLUSION
`
`For the reasons above, the Board should grant CyWee’s Motion.
`
`
`
`10
`
`
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`Cywee Group Ltd.
`
`
`
`
`Dated: May 21, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`
`
`
`
`Case IPR2018-01257
`Patent No. 8,552,978
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the date
`
`indicated below, a complete and entire copy of this submission, including the
`
`exhibits hereto, was provided by email to Petitioner’s counsel via email, as agreed
`
`to by Petitioner’s Service Information in the Petition submission, by serving the
`
`email address of record as follows:
`
`Matthew A. Smith
`SMITH BALUCH LLP
`110 Alma St., Ste 109
`Menlo Park, CA
`(202) 669-6207
`smith@smithbaluch.com
`
`Andrew S. Baluch
`SMITH BALUCH LLP
`110 Alma St., Ste 109
`Menlo Park, CA
`(847) 863-1645
`baluch@smithbaluch.com
`
`Christopher M. Colice
`SMITH BALUCH LLP
`110 Alma St., Ste 109
`Menlo Park, CA
`(617) 947.7280
`colice@smithbaluch.com
`
`
`
`
`
`
`
`
`
`Dated: May 21, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37488
`
`Counsel for Patent Owner
`Cywee Group Ltd.
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
