Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 60
`Entered: August 19, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE LLC, ZTE (USA), INC.,
`SAMSUNG ELECTRONICS CO., LTD.,
`LG ELECTRONICS INC., HUAWEI DEVICE USA, INC.,
`HUAWEI DEVICE CO. LTD., HUAWEI TECHNOLOGIES CO. LTD.,
`HUAWEI DEVICE (DONGGUAN) CO. LTD.,
`HUAWEI INVESTMENT & HOLDING CO. LTD.,
`HUAWEI TECH. INVESTMENT CO. LTD., and
`HUAWEI DEVICE (HONG KONG) CO. LTD.,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD,
`Patent Owner.
`____________
`
`Case IPR2018-01257 (Patent 8,552,978 B2)
`Case IPR2018-01258 (Patent 8,441,438 B2)
`____________
`
`
`
`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, 42.53
`
`
`571-272-7822
`
`
`
`
`
`Paper 60
`Entered: August 19, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GOOGLE LLC, ZTE (USA), INC.,
`SAMSUNG ELECTRONICS CO., LTD.,
`LG ELECTRONICS INC., HUAWEI DEVICE USA, INC.,
`HUAWEI DEVICE CO. LTD., HUAWEI TECHNOLOGIES CO. LTD.,
`HUAWEI DEVICE (DONGGUAN) CO. LTD.,
`HUAWEI INVESTMENT & HOLDING CO. LTD.,
`HUAWEI TECH. INVESTMENT CO. LTD., and
`HUAWEI DEVICE (HONG KONG) CO. LTD.,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD,
`Patent Owner.
`____________
`
`Case IPR2018-01257 (Patent 8,552,978 B2)
`Case IPR2018-01258 (Patent 8,441,438 B2)
`____________
`
`
`
`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, 42.53
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`
`A conference call was held among the parties and the panel on August
`19, 2019. At issue in these proceedings is whether all real parties in interest
`were properly identified as required by 35 U.S.C. § 312(a)(2) and whether
`the proceedings are barred under 35 U.S.C. § 315(b). See Papers 40 (Patent
`Owner Motion to Terminate), 52 (redacted version of Petitioner
`Opposition).1 With the consent of lead petitioner, Google, Mr. Devkar,
`counsel for LG, spoke on behalf of the petitioners.
`Two aspects of the history of these proceedings are relevant to the
`current dispute. First, we previously denied Patent Owner’s Motions for
`Additional Discovery related to the real-party-in-interest issues. Paper 30.
`In particular, we stated that our “principal concern” with Patent Owner’s
`proposed additional discovery was the “understandability of instructions and
`degree of burden to answer.” Id. at 8. Second, we previously denied a
`request by LG for “authorization to file a short response, i.e., no more than
`three pages, to Patent Owner’s Motions to terminate, in order to address
`what LG contends is a mischaracterization of statements made by LG in its
`joinder petitions.” Paper 45, 3. In doing so, we “determined that the
`appropriate course of action is to allow [lead petitioner] Google to determine
`how it wishes to oppose Patent Owner’s Motions, including whether to offer
`argument or evidence that Patent Owner’s Motions include
`mischaracterizations.” Id.
`With its Oppositions to the Motions to Terminate, Google submitted a
`Declaration by Collin W. Park, which includes explanation of the
`controversial statements made in LG’s joinder petitions. Ex. 1038. Patent
`
`
`1 Citations are to IPR2018-01257. Similar papers have been filed in
`IPR2018-01258.
`
`2
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`Owner seeks to depose Mr. Park as routine discovery. 37 C.F.R.
`§ 42.51(b)(1). LG has offered to make Mr. Park available for deposition for
`two hours, rather than the default time of seven hours set forth in our
`regulations. See 35 C.F.R. § 42.53(c)(2). According to LG, Mr. Park’s
`Declaration addresses a narrow issue that does not warrant seven hours of
`cross-examination. LG further speculates that Patent Owner seeks the
`longer deposition time to evade our denial of its prior Motion for Additional
`Discovery by examining Mr. Park on issues outside the scope of his
`Declaration. Patent Owner counters with its own speculation that, with a
`truncated time period, Mr. Park may attempt to diminish the value of the
`cross-examination through “witness mischief” such as stalling, dissembling,
`or being unresponsive, effectively trying to run out the clock.
`LG requests instructions to limit the time and scope of cross-
`examination. With respect to time, we decline to truncate the time afforded
`by our regulations. We previously cautioned the petitioners that, should
`Google choose to submit evidence with its Oppositions, such evidence “is
`subject to the routine-discovery provisions of 37 C.F.R. § 42.51(b)(1).”
`Paper 45, 3. Mr. Park is not a legally unsophisticated witness. Indeed, he is
`an experienced patent attorney, a partner at a large and well-known law firm,
`and lead counsel for LG in these proceedings. With such a sophisticated
`witness, we agree with Patent Owner that sufficient safeguards exist to
`prevent harassment of the witness through the ability to object and seek
`relief from the Board.
`With respect to scope, our regulations specifically provide that “[f]or
`cross-examination testimony, the scope of the examination is limited to the
`scope of the direct testimony.” 37 C.F.R. § 42.53(d)(5)(D)(ii). In
`
`3
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`addressing this requirement on the call, the parties agreed that the scope of
`the direct testimony encompasses the “subject matter of the Declaration,”
`but disagree on how to characterize that subject matter. We find Patent
`Owner’s proposal that the scope of the direct testimony set forth in the
`Declaration is “whether LG is a real party in interest” to be too broad. At
`the same time, LG’s implication that the scope is limited merely to clarifying
`the controversial statements in the joinder petitions is too narrow. We note,
`for example, that Mr. Park additionally attests that “[n]o other party financed
`or controlled in any way the preparation and filing of the LGE 559 and 560
`Petitions.” Ex. 1038 ¶ 6. Patent Owner is entitled, as routine discovery, to
`test such statements through cross-examination. The appropriate scope of
`cross-examination is defined by the direct testimony. That is, a question
`posed to Mr. Park is properly within scope if it has sufficient underlying
`basis in a statement made by Mr. Park in his Declaration.
`
`Accordingly, it is
`ORDERED that LG’s request to limit the time of cross-examination
`of Mr. Park to less than the time provided in our regulations is denied.
`
`
`
`4
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`For Petitioner:
`
`Matthew A. Smith
`Andrew S. Baluch
`SMITH BALUCH LLP
`smith@smithbaluch.com
`baluch@smithbaluch.com
`
`James Sobieraj
`Jon Beaupre
`Yeuzhong Feng
`Andres Shoffstall
`BRINKS GILSON & LIONE
`jsobieraj@brinksgilson.com
`jbeaupre@brinksgilson.com
`yfen@brinksgilson.com
`ashoffstall@brinksgilson.com
`
`Naveen Modi
`Chetan Bansal
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`chetanbansal@paulhastings.com
`
`Collin Park
`Andrew Devkar
`Jeremy Peterson
`Adam Brooke
`MORGAN LEWIS & BOCKIUS LLP
`Collin.park@morganlewis.com
`Andrew.devkar@morganlewis.com
`jpeterson@morganlewis.com
`adam.brooke@morganlewis.com
`
`Kristopher Reed
`Benjamin Kleinman
`Norris Booth
`KILPATRICK TOWNSEND
`kreed@kilpatricktownsend.com
`
`5
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`bkleinman@kilpatricktownsend.com
`nboothe@kilpatricktownsend.com
`
`
`For Patent Owner:
`
`Jay P. Kesan
`DIMURO GINSBERG PC-DGKEYIP GROUP
`jkesan@dimuro.com
`
`Ari Rafilson
`SHORE CHAN DEPUMPO LLP
`arafilson@shorechan.com
`
`6
`
`
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