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`U.S. Pat. No. 8,552,978
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`Google LLC
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`Petitioner
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`v.
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`Cywee Group Ltd.
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`(record) Patent Owner
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`IPR2018-01257
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`Patent No. 8,552,978
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION FOR ADDITIONAL DISCOVERY
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`U.S. Pat. No. 8,552,978
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`Google LLC
`
`Petitioner
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`v.
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`Cywee Group Ltd.
`
`(record) Patent Owner
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`IPR2018-01257
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`Patent No. 8,552,978
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION FOR ADDITIONAL DISCOVERY
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`IPR2018-01257
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`U.S. Pat. No. 8,552,978
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`II.
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`TABLE OF CONTENTS
`TABLE OF EXHIBITS ........................................................................................... iii
`I.
`CYWEE’S MOTION IS UNTIMELY ............................................................ 1
`A.
`CyWee’s motion contains an implicit request for an extension of
`time, and should require good cause ..................................................... 1
`CyWee has not shown good cause for its delay .................................... 2
`B.
`THE REQUESTED ADDITIONAL DISCOVERY IS NOT IN THE
`INTERESTS OF JUSTICE ............................................................................. 6
`A.
`CyWee’s requests are too broad ............................................................ 6
`B.
`CyWee’s requests are unlikely to produce anything useful .................. 7
`C.
`The Board should consider timeliness as part of the interests of
`justice inquiry ...................................................................................... 10
`CERTIFICATE OF SERVICE ................................................................................ 12
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`IPR2018-01257
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`U.S. Pat. No. 8,552,978
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
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`1008
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`1009
`1010
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`1011
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`1012
`1013
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`1014
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`1015
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`TABLE OF EXHIBITS
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`
`Description
`U.S. Pat. No. 8,441,438 (“the ’438 patent”).
`Declaration of Professor Majid Sarrafzadeh.
`C.V. of Professor Majid Sarrafzadeh.
`U.S. Pat. No. 7,089,148 (“Bachman”).
`U.S. Pat. App. Pub. 2004/0095317 (“Zhang”).
`U.S. Pat. 7,158,118 (“Liberty”).
`Return of Service for Cywee Group Ltd. v. Google, Inc., Case No.
`1-18-cv-00571, (D. Del.).
`Return of Service for Cywee Group Ltd. v. Huawei Technologies
`Co., Inc. et al., Case No. 2-17-cv-00495, (E.D. Tex.).
`File History of U.S. Pat. App. 12/943,934.
`Joint Claim Construction and Prehearing Statement in Cywee
`Group Ltd. v. Samsung Electronics Co. Ltd. et al., Case No. 2-17-
`cv-00140, (E.D. Tex.).
`Ex. E to Complaint of April 16, 2018 in Cywee Group Ltd. v.
`Google, Inc., Case No. 1-18-cv-00571 (D. Del.).
`Email of August 3, 2018 from Michael Shore to Luann Simmons.
`CyWee’s First Requests for Production of Documents in Cywee
`Group Ltd. v. Google, Inc., Case No. 1-18-cv-00571, (D. Del.).
`CyWee’s Opposition to Petitioner’s Motion for Joinder to Inter
`Partes Review IPR2018-01258 of February 8, 2019.
`CyWee’s Opp. to Defendants’ Motion to Stay Pending Inter Partes
`Review Proceedings in CyWee Group, Ltd. v. Samsung Elec. Co.,
`Ltd., Case 2:17-cv-00140-WCB-RSP (E.D. Tex. Jan. 25, 2019).
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`1016
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`Complaint of April 16, 2018 in Cywee Group Ltd. v. Google, Inc.,
`Case No. 1-18-cv-00571 (D. Del.).
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`Petitioner, Google LLC, respectfully requests that the Board deny Patent
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`Owner CyWee’s motion of May 21, 2019 for additional discovery (“Mot.”)(Paper
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`24). CyWee’s motion is untimely, and its requests are not in the interests of justice.
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`I.
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`CYWEE’S MOTION IS UNTIMELY
`CyWee’s motion should be denied because CyWee failed to raise it during its
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`discovery period. Timeliness is both a threshold issue (§I), and a factor in the
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`“interests of justice” analysis (§II). See The Heil Co. v. Adv. Custom Engineered
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`Systems & Equip. Co., IPR2018-00139, Paper 17, p. 7 (PTAB Oct. 9, 2018).
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`A. CyWee’s motion contains an implicit request for an extension of
`time, and should require good cause
`CyWee essentially seeks an extension of its discovery period. CyWee’s
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`discovery period, per the Trial Practice Guide, ended when CyWee filed its Patent
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`Owner Response. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,757-61
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`(Aug. 14, 2012). The Board has previously required “good cause” to seek RPI
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`discovery after the patent owner’s discovery period. 37 C.F.R. §§42.5(c)(2) and (3).
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`See The Heil Co. v. Adv. Custom Engineered Systems & Equip. Co., IPR2018-00139,
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`Paper 17, p. 7 (PTAB Oct. 9, 2018)(“Patent Owner does not offer any good cause
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`for its delay in requesting this discovery….”).1
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`1 CyWee cites a non-precedential decision (Paper 73) from the Ventex case for the
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`proposition that RPI issues cannot be waived, but CyWee’s motion here is for
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`B. CyWee has not shown good cause for its delay
`CyWee has not sufficiently explained its delay. CyWee asserts only that
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`“[u]pon reviewing Ventex, Patent Owner revisited the RPI issue….” (Mot., p. 3).2
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`This statement, however, does not explain why CyWee did not file its motion
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`earlier. That is the question that CyWee needs—and consistently fails—to answer.
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`See The Heil Co. v. Adv. Custom Engineered Systems & Equip. Co., IPR2018-00139,
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`Paper 17, p. 7 (PTAB October 9, 2018)(in denying a motion for additional discovery,
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`reasoning “Patent Owner could not provide a reason as to why it did not request this
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`discovery sooner.”).
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`CyWee cannot answer this question, because the designation of Ventex as
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`precedential did not change the relevant law. Ventex purported to follow the Federal
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`Circuit’s decision in Applications in Internet Time, LLC v. RPX Corp., 897 F.3d
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`1336 (Fed. Cir. July 9, 2018)(“AIT”). AIT issued just over three weeks after Google
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`filed its petitions, and eight months before CyWee filed its Patent Owner Response.
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`If CyWee believed that an RPI was not properly named, it should have made a case
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`additional discovery. The Board has also held, in a precedential decision, that RPI
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`issues are “not jurisdictional”. See Lumenthum Holdings, Inc. v. Capella
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`Photonics, Inc., IPR2015-00739, PAPER 38 (PTAB Mar. 4, 2016)(precedential).
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`2 CyWee’s explanation relates only to the RPI issue, not privity.
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`during those eight months, rather than waiting well into Google’s reply period.
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`CyWee argues that Ventex did change the law by “clarif[ying] that the Board
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`would now accept as evidence of an RPI relationship certain types of facts that it had
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`previously declined to consider, such as indemnification agreements.” (Mot., p. 3).
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`CyWee, however, takes an overly-simplistic view of the Board’s precedent.
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`“Indemnification”—both before and after Ventex’s precedential designation—has
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`always been but one factor in a “highly fact-dependent question”.3 It is neither
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`wholly irrelevant, nor itself dispositive, of RPI issues. See, e.g., Samsung
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`Electronics Co., Ltd. et al. v. Seven Networks, LLC, IPR2018-01108, Paper 31, pp.
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`11-13 (PTAB January 24, 2019); Atlanta Gas Light Co. v. Bennet Regulator Guards,
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`Inc., IPR2013-00453, Paper 31, pp. 11-13 and n.1 (PTAB January 22, 2014). The
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`same is true with respect to privity. See AIT, 897 F.3d. at 1362.
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`Nor did the designation of Ventex as precedential increase the importance of
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`indemnity agreements. Indemnification, however, played a small role in the specific
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`RPI question at-issue in Ventex. More relevant was the “specially structured,
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`preexisting, and well established business relationship,” including “exclusivity
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`arrangements”. Ventex, p. 10. And even if the Board had used indemnification as
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`evidence of an RPI relationship for the first time in Ventex, the Ventex decision
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`3 Trial Practice Guide, 77 Fed. Reg. 48756, 48759 (Aug. 14, 2012).
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`issued in January 2019, well before CyWee’s response deadline.
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`CyWee asserts that Ventex is so “parallel” to this proceeding that CyWee’s
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`late motion can be excused. (Mot., p. 3). This is incorrect. In Ventex, the petitioner
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`(Ventex) manufactured the allegedly infringing product only for the unnamed RPI
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`(Seirus). Ventex, pp. 8-9. The patent owner filed an infringement suit against Seirus,
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`but not against Ventex. Ventex, p. 8. A Ventex executive explained that the “filing
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`of the Petition was grounded in concern of potential legal jeopardy for ‘its
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`customers’….” (Id.). Ventex only had one customer, filed the IPR to protect that
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`customer, but did not name that customer as an RPI. Ventex, pp. 8-9.
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`Ventex thus involved an exceptional set of facts not present here, where
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`CyWee pursued serial litigations against different defendants, including Google
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`itself. CyWee filed suit against Google, asserting infringement by Google’s own
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`products, months after suing Samsung, LG and ZTE. (Ex. 1016, ¶¶38-39 and 122-
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`123). Within two months after CyWee’s suit against Google, Google filed IPR
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`petitions. And although CyWee argues that Google’s Android operating system
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`software is central to its infringement cases against Samsung, LG and ZTE, the
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`patent claims require physical elements, like sensors. There is also no exclusive
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`relationship (as in Ventex); CyWee alleges that multiple parties should be RPIs.
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`Despite the unusual facts in Ventex not present here, CyWee asks the Board
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`to infer that Ventex made a key change to the relevant law—allowing CyWee to raise
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`an argument. If that were true—if Ventex’s precedential designation is not simply a
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`convenient excuse for neglect—then one would expect CyWee to have first
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`discussed RPI issues only after Ventex’s designation. Yet in the district court
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`litigation against Google, CyWee’s litigation counsel wrote to Google’s litigation
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`counsel in August 2018, requesting documents relating to Google’s relationship with
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`Samsung, and
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`specifically
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`referencing RPI
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`issues.
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`(Ex. 1012, p.
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`1). The next day, CyWee served corresponding document requests (Ex. 1013), and
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`Google objected to those requests on September 3, 2019. (Ex. 2013).
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`CyWee also raised similar issues in the Samsung, LG and ZTE IPRs. For
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`example, on Feb. 8, 2019 (over a month before CyWee’s response in this IPR was
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`due), CyWee filed an opposition to Samsung’s motion for joinder, arguing
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`“additional discovery will be necessary to determine the extent of the relationship
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`between the petitioners and to discover whether other third parties that also use the
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`Android operating system that are not currently seeking to join the Google IPR are
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`Real Parties in Interest (RPI) to its outcome.” (Ex. 1014, p. 6). Despite its statements
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`regarding the necessity of discovery concerning RPI issues both before and during
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`its own discovery period, CyWee neglected to pursue such discovery.
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`Finally, CyWee’s citation to Ventex’s decision to extend the statutory deadline
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`for completing an IPR is inapposite here. The Patent Owner in Ventex timely raised
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`the RPI issue shortly after the Federal Circuit issued its decision in AIT. CyWee,
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`despite having the ability to raise the issue at the same time as the Patent Owner in
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`Ventex, did not. The delay is entirely of CyWee’s making, and entirely unjustified.
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`CyWee should not be rewarded for delaying the issue into Google’s reply period.
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`II. THE REQUESTED ADDITIONAL DISCOVERY IS NOT IN THE
`INTERESTS OF JUSTICE
`Additional discovery must be in “the interests of justice”. 35 U.S.C.
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`§316(a)(5); 37 C.F.R. §42.150(c)(1). CyWee’s requests fail the Garmin test,
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`because they are too broad, unlikely to uncover anything useful, and late.
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`A. CyWee’s requests are too broad
`CyWee’s requests are a classic fishing expedition. Congress intended for the
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`scope of additional discovery to be “conservative”. See Garmin Int’l v. Cuozzo
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`Speed Tech. LLC, IPR2012-00001, Paper No. 26, p. 5 (PTAB March 5,
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`2013)(precedential). Rather than focusing on individual documents or narrowly
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`tailoring its requests to avoid undue burden on Google, CyWee makes litigation-
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`style requests for broad categories of documents with no explanation of how these
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`materials are relevant to the RPI or privity inquiries. (Mot., pp. 9-10). CyWee, for
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`example, seeks documents related to Huawei, despite the fact that Huawei is already
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`named as an RPI (making the discovery irrelevant). CyWee’s first request appears
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`to call for any agreement relating to other petitioners and Google’s Android
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`Operating System (id., p. 2, requesting production of “any licensing, cross-licensing,
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`supplier, manufacturing,
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`joint defense,
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`joint
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`interest, and
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`indemnification
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`agreements”), without CyWee explaining the relevance of such a broad range of
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`agreements. CyWee’s second request calls for any document regarding not only
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`Google’s IPRs, but also CyWee’s patent infringement suits against any defendants
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`on these patents (including Huawei and HTC, which does not seek joinder), and
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`facially would sweep in documents that are both likely privileged and unrelated to
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`the IPRs. CyWee has made no effort to tether this request to materials that might
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`actually relate to the determination of whether these parties are RPIs. CyWee’s
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`deposition request is also far too broad, in that it is directed to all licensing practices
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`for any Android partners as well as agreements with the petitioners seeking joinder.
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`Nor has CyWee shown why a deposition is required at all, or how a deposition would
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`provide information that CyWee could not obtain through documents. CyWee’s
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`discovery requests are too extensive and would place undue burden on Google,
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`especially given the lack of relevance to this proceeding, as discussed in the next
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`section. CyWee has thus failed to meet at least Garmin factors (2), (4) and (5).
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`B. CyWee’s requests are unlikely to produce anything useful
`CyWee’s requests are also unlikely to produce anything useful, and thus fail
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`Garmin factor (1). The Board has already examined, applying AIT, the relationship
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`and relevant agreements between Google and Samsung with respect to Android,
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`finding “the evidence shows that Samsung and Google have a standard customer-
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`supplier relationship, which by itself does not make Samsung an RPI.” Google LLC
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`v. Seven Networks, LLC, IPR2018-01116, Paper 36, pp. 17-18 (PTAB Feb. 25,
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`2019); Samsung Electronics Co., Ltd. et al. v. Seven Networks, LLC, IPR2018-
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`01108, Paper 31, pp. 10-13 (PTAB Jan. 24, 2019). CyWee presents no reason to go
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`beyond the Seven Networks cases. Instead, CyWee makes speculative assertions that
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`verge on the nonsensical. For example, CyWee argues that:
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`“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. Google
`is acting as a proxy to allow Samsung to relitigate prior art that it
`previously abandoned.”
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`(Mot. P. 8). Here, CyWee appears to suggest that Samsung dropped the Bachmann
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`reference in litigation and then supposedly convinced Google to file an IPR to revive
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`Samsung’s Bachmann-based invalidity case.4 This argument is not only speculative,
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`4 Lest there be any attempt to infer the opposite, Google did not file its IPR
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`petitions at the behest of Samsung, LG or ZTE, and Google did not receive any
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`funding or support for the petitions from any of these parties. Google selected the
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`prior art for these IPR petitions, determined the grounds for these petitions,
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`developed the positions for these petitions, and financed these petitions. Samsung,
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`ZTE and LG did not provide input into this IPR and did not have the opportunity to
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`review or edit any drafts of the petitions.
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`but also conflicts with the facts and CyWee’s own arguments in the Samsung
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`litigation. There, CyWee opposed Samsung’s motion to stay the litigation pending
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`completion of Google’s IPRs, by arguing that there were significant differences
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`between the litigation and Google IPRs. (Ex. 1015, p. 1). CyWee also noted that
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`Samsung had dropped Bachmann after Google filed its IPRs (Ex. 1015, p. 1), and
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`that by so doing Samsung had “implicitly conceded that the Google IPRs are
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`meritless”. (Ex. 1015, p. 13). The notion that Samsung convinced Google to file
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`IPRs that Samsung (according to CyWee) considered to be “meritless”, all to revive
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`an invalidity case Samsung had yet to drop, strains credulity.
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`CyWee’s reference to the “PAX” license is equally contrived. CyWee’s own
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`exhibits indicate that “[u]nder PAX, members grant each other royalty-free patent
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`licenses covering Android and Google Applications on qualified devices.” (Ex.
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`2016, p. 2). CyWee asserts, without support, that this means that PAX “create[s] a
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`defense group for Google and members of the ‘Android Ecosystem’.” (Mot., p. 6).
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`CyWee also incorrectly argues that “[l]ike in Ventex, Google has made efforts
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`to obscure the nature of any agreements between it and Samsung…by refusing to
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`produce such agreements while tacitly admitting that they exist.” (Mot., p. 8). In
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`Ventex, the Board found evidence that the parties had engaged in a sham transaction,
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`complete with sham agreements, to hide the unnamed RPI’s involvement in the
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`petition. Ventex, pp. 13-15. In the present case, CyWee does not contend that
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`Google and Samsung engaged in any sham transaction, but rather likens the Ventex
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`conduct to routine objections to CyWee’s document requests.5 (Mot., p. 8). Had
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`CyWee disagreed with Google’s objections, however, it could have filed a motion
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`to compel, or timely pursued discovery in this proceeding. It simply neglected to do
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`so. CyWee has thus provided only speculation that useful information will be
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`obtained.
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`C. The Board should consider timeliness as part of the interests of
`justice inquiry
`Finally, the Board should consider the delay in presentation of this motion in
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`the overall determination of whether the discovery is in the interests of justice. See
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`The Heil Co. v. Adv. Custom Engineered Systems & Equip. Co., IPR2018-00139,
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`Paper 17, p. 7 (PTAB October 9, 2018). This is relevant generally, and to Garmin
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`factor (3), because CyWee could have pursued discovery earlier.
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`Because the discovery is overbroad, unproductive, and late, Google
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`respectfully requests denial of the motion.
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`5 CyWee concedes both in its motion and in correspondence to Google’s litigation
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`counsel that it was seeking discovery in the litigation for use in these IPRs. (Mot.
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`p. 10)(Ex. 1012, p. 1).
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`IPR2018-01257
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`Date: Tuesday, May 28, 2019
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`U.S. Pat. No. 8,552,978
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`/Matthew A. Smith/ (RN 49,003)
`Matthew A. Smith
`SMITH BALUCH LLP
`1100 Alma St., Ste 109
`Menlo Park, CA
`(202) 669-6207
`smith@smithbaluch.com
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`Counsel for Petitioner Google LLC
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing Petitioner’s Opposition to
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`Patent Owner’s Motion for Additional Discovery, together with all exhibits and
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`other documents filed therewith, was served by electronic mail on Tuesday, May 28,
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`2019, on the Patent Owner’s counsel of record at the United States Patent &
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`Trademark Office having the following addresses:
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` Date: May 28, 2019
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`/Matthew A. Smith/ (RN 49,003)
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