`571-272-7822
`
`
`
`
`
`Paper 10
`Date: August 2, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`Before JAMESON LEE and NATHAN A. ENGELS,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS
`RESEARCH INSTITUTRE,
`Patent Owner.
`____________
`
`IPR2021-00827
`Patents 9,781,448 B2
`____________
`
`
`
`Order
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2021-00827
`Patent 9,781,448 B2
`
`
`Introduction
`On July 30, 2021, a telephone conference call was held. The
`participants were Judge Jameson Lee and Judge Nathan Engels, and
`respective counsel for the parties. Counsel for Patent Owner requested
`authorization to file a motion for additional discovery to obtain information
`relating to Petitioner’s membership agreements, fees paid by members, and
`services provided to members. Patent Owner essentially seeks the same
`material provided by Petitioner in IPR2021-00275. For three reasons
`discussed below, authorization is denied.1
`Discussion
`I.
`Patent Owner requested a telephone conference on July 26, 2021, with
`regard to seeking discovery on the issue of real parties-in-interest. Patent
`Owner’s preliminary response, in which Patent Owner would (and did) make
`the assertion that Petitioner failed to identify all real parties-in-interest, was
`due the next day, July 27, 2021. There could have been no reasonable
`expectation that a telephone conference call would be arranged, a motion for
`additional discovery be authorized and filed, an opposition to the motion be
`filed, a reply to the opposition be filed, and a decision be made on that
`motion all within a single business day, much less obtaining the information
`requested and making use of that information within the same business day.
`Although we have authorized Petitioner to file a preliminary reply and
`Patent Owner to file a preliminary sur-reply, on the subject of identification
`of real parties-in-interest, a sur-reply is not an appropriate place for Patent
`
`
`1 If an inter partes review is instituted, Patent Owner may seek authorization
`again, if necessary, within two weeks of the decision instituting review.
`
`2
`
`
`
`IPR2021-00827
`Patent 9,781,448 B2
`
`Owner to start over with material obtained from additional discovery. The
`attempt to obtain additional discovery simply was not timely made.
`II.
`According to SharkNinja Operating LLC v. iRobot Corp., IPR2020-
`
`00734, Paper 11, 19–20 (PTAB Oct. 6, 2020) (precedential), where there is
`no time bar or estoppel implication with respect to the allegedly unnamed
`entity, it best serves the interest of cost and efficiency not to engage in a
`lengthy exercise to determine whether the alleged entity should have been
`named as a real party-in-interest. We have that circumstance here. It is not
`necessary to make that determination, at least prior to a decision on whether
`to institute inter partes review. At this time it is not necessary for Patent
`Owner to obtain the information it seeks.
`III.
`Based on discussions in the conference call, Petitioner is not unwilling
`
`to provide the information sought by Patent Owner without agreement as to
`certain protections. Petitioner desires to file a motion to seal certain
`information it would provide, the same as it has filed in IPR2021-00275.
`Petitioner would like Patent Owner not to litigate the motion to seal twice,
`once before the panel in IPR2021-00275 and once before the panel here in
`this proceeding. In that regard, counsel for Patent Owner indicated
`agreement, so long as Petitioner’s motion to seal in this proceeding is based
`on the same contentions as those contained in the motion to seal filed in
`IPR2021-00275. Thus, on discovery, there is no actual dispute, in principle,
`between the parties. It appears that the parties can work out the details and
`
`3
`
`
`
`IPR2021-00827
`Patent 9,781,448 B2
`
`be in agreement with each other to permit discovery of the information
`requested.2
`
`Order
`
`It is
`ORDERED that for the foregoing reasons, Patent Owner’s request for
`authorization to file a motion for additional discovery is denied; and
`FURTHER ORDERED that Patent Owner may seek authorization
`again, if necessary, within two weeks of institution of inter partes review, if
`review is instituted.
`
`
`
`
`
`2 We noted that a decision by this panel on a motion to seal may differ from
`a decision on a motion to seal in IPR2021-00275, but we noted that that does
`not affect Patent Owner’s position on the matter.
`
`
`4
`
`
`
`IPR2021-00827
`Patent 9,781,448 B2
`
`For PETITIONER:
`Roshan Mansinghani
`Ashraf Fawzy
`Jung S. Ham
`Unified Patents, LLC
`roshan@unifiedpatents.com
`afawzy@unifiedpatents.com
`jung@unifiedpatents.com
`
`Eric A. Buresh
`Robin Snader
`Erise IP, P.A.
`eric.buresh@eriseip.com
`robin.snader@eriseip.com
`ptab@eriseip.com
`
`For PATENT OWNER:
`W. Karl Renner
`Roberto J. Devoto
`Nicholas Stephens
`Fish & Richardson P.C.
`IPR07314-0040IP1@fr.com
`PTABInbound@fr.com
`
`
`
`5
`
`
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