Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 18
`Date: May 3, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TCL INDUSTRIES HOLDINGS CO., LTD., HISENSE CO., LTD., and
`LG ELECTRONICS INC.,
`Petitioners,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-009901
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`ORDER
`Granting Petitioners’ Motion for Routine and/or
`Additional Discovery
`37 C.F.R. §§ 42.51(b)(1)(iii), (b)(2)(i)
`
`
`
`
`
`1 LG Electronics Inc., who filed a petition in IPR2022-00245, is joined as
`petitioner in this proceeding.
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 18
`Date: May 3, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TCL INDUSTRIES HOLDINGS CO., LTD., HISENSE CO., LTD., and
`LG ELECTRONICS INC.,
`Petitioners,
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-009901
`Patent 7,110,444 B1
`____________
`
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`ORDER
`Granting Petitioners’ Motion for Routine and/or
`Additional Discovery
`37 C.F.R. §§ 42.51(b)(1)(iii), (b)(2)(i)
`
`
`
`
`
`1 LG Electronics Inc., who filed a petition in IPR2022-00245, is joined as
`petitioner in this proceeding.
`
`
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`
`I. INTRODUCTION
`With our prior authorization, Petitioners2 filed a Motion for Routine
`and/or Additional Discovery Under 37 C.F.R. § 42.51(b). Paper 13
`(“Motion” or “Mot.”). Patent Owner filed an Opposition to Petitioners’
`Motion (Paper 15, “Opposition” or “Opp.”) and Petitioners filed a Reply
`(Paper 17, “Reply”). Petitioners’ Motion requests an order requiring Patent
`Owner, ParkerVision, Inc., to produce discovery comprising its Final
`Infringement Contentions for U.S. Patent No. 7,110,444 B1 (“the
`’444 patent”) from the underlying litigations between the parties in the U.S.
`District Court for the Western District of Texas. Mot. 1. Petitioners assert
`that the Motion should be granted for two independent reasons: (1) the Final
`Infringement Contentions “are required ‘routine’ discovery under 37 C.F.R.
`§ 42.51(b)(1)(iii)” because Patent Owner’s Response in this proceeding
`allegedly raises positions “that are inconsistent with positions it took in the
`Final Infringement Contentions”; and (2) the Final Infringement Contentions
`should be produced as “‘additional’ discovery under 37 C.F.R.
`§ 42.51(b)(2)(i) because it is in the interests of justice.” Id. at 1–2.
`For the reasons below, Petitioners’ Motion for Routine and/or
`Additional Discovery is granted. Specifically, we grant Petitioners’ Motion
`in so far as it requests additional discovery, but we do not reach the
`alternative basis presented by Petitioners—for routine discovery.
`
`
`2 Petitioner LG Electronics Inc. (“LG”) was joined as a petitioner in this
`proceeding after the Motion addressed herein was filed. Paper 16.
`
`2
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`
`II. DISCUSSION
`Pursuant to 37 C.F.R. § 42.51(b)(2)(i), “[t]he parties may agree to
`additional discovery between themselves. Where the parties fail to agree, a
`party may move for additional discovery. The moving party must show that
`such additional discovery is in the interests of justice . . . . The Board may
`specify conditions for such additional discovery.” In determining whether a
`request for additional discovery should be granted under the “interests of
`justice” standard, we are guided primarily by the factors set forth in Garmin
`International, Inc. v. Cuozzo Speed Technologies LLC, IPR2021-00001,
`Paper 26 (PTAB Mar. 5, 2013) (Decision on Motion for Additional
`Discovery) (designated precedential). See, e.g., Patent Trial and Appeal
`Board Consolidated Trial Practice Guide (Nov. 2019), at 25–28 (available
`at https://www.uspto.gov/TrialPracticeGuideConsolidated).
`
` More Than a Possibility and Mere Allegation
`Petitioners contend that there is more than a possibility or mere
`allegation that the requested discovery will yield useful information because
`Petitioners’ counsel already has the requested discovery in their possession
`due to their participation in the related litigations, Mot. 1, and, therefore,
`“this is not a fishing expedition for something that may or may not exist,” id.
`at 10. Petitioners assert that the discovery will be useful in this proceeding
`because Petitioners contend Patent Owner raised positions therein that are
`inconsistent with positions taken in the Patent Owner Response (Paper 12) in
`this proceeding. Id.
`Patent Owner contends that “‘[u]seful,’ in this context, means
`‘favorable in substantive value to a contention of the party moving for
`discovery’; it does not encompass evidence that is merely ‘relevant’ or
`
`3
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`
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`IPR2021-00990
`Patent 7,110,444 B1
`
`‘admissible.’” Opp. 8 (quoting Garmin, IPR2012-00001, Paper 26 at 6).
`Patent Owner asserts that “Petitioners admit that there is nothing of
`substance they seek to uncover in the [Final Infringement Contentions];
`instead, Petitioners seek to use the absence of information as proof of [Patent
`Owner’s] alleged inconsistent positions.” Id. at 8–9 (citing Mot. 7). Patent
`Owner contends that Petitioners’ argument “relates more to the nature of the
`[Final Infringement Contentions] at a stage in the litigation (when
`Petitioners have not produced technical documents) rather than any showing
`of inconsistencies between the information sought and [Patent Owners’]
`positions in the [Patent Owner Response].” Id. at 9. Patent Owner asserts
`that, because “there are no inconsistencies” between the arguments raised in
`the Patent Owner Response and those presented in the Final Infringement
`Contentions, “Petitioners’ request will not uncover any ‘useful’
`information.” Id.
`We find that Petitioners establish that there is more than a possibility
`or mere allegation that the requested discovery will yield useful information.
`In particular, Patent Owner’s Final Infringement Contentions in the related
`litigations provide an indication of Patent Owner’s understanding and
`application of the claims of the ’444 patent. Additionally, whether or not the
`positions taken by Patent Owner are inconsistent, it is undisputed that the
`positions are different. Specifically, Patent Owner does not dispute that the
`positions are different, arguing instead that the Patent Owner Response
`presents “one of several possible calculations” that could be used to
`determine energy storage. See, e.g., Opp. 6; see id. at 6–8 (acknowledging
`differences). The acknowledged differences provide a sufficient basis for
`
`4
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`our finding that there is more than a possibility or mere allegation that the
`requested discovery will yield useful information.
`
` Litigation Positions and Underlying Basis
`Petitioners’ requested discovery does not seek any information not
`already in the possession of Petitioners’ counsel and does not seek to obtain
`information regarding Patent Owner’s future litigation positions or the
`underlying basis thereof. Mot. 11.3 Thus, we find that this factor favors
`Petitioners’ request.
`
` Ability to Generate Equivalent Information by Other Means
`Petitioners contend that this factor strongly favors their request
`because Patent Owner will not make its Final Infringement Contentions
`available unless the Motion is granted. Mot. 11. Patent Owner asserts that,
`in prior proceedings, it presented the same claim construction positions
`taken in the Final Infringement Contentions, and, therefore, Petitioners
`“cannot reasonably maintain that such evidence did not exist or was
`previously unavailable at the time Petitioners filed their Petition.” Opp. 10.
`We find that this factor favors Petitioners’ request. In particular, we
`find that Petitioners cannot generate equivalent information by other means
`because it is not clear that Patent Owner asserts precisely the same positions
`in prior proceedings. Additionally, even if Patent Owner may have proposed
`similar positions in other proceedings, it is in the interests of justice that the
`Final Infringement Contentions be provided to Petitioners in this proceeding
`so that the precise positions taken therein may be assessed clearly and so that
`
`
`3 Patent Owner’s Opposition does not address this factor. See generally
`Opp.
`
`5
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`a complete record may be made. Further, to the extent Petitioners’
`substantive briefing asserts arguments pertaining to the alleged
`inconsistencies, access to the Final Infringement Contentions by the Board
`may be necessary.
`
` Easily Understandable Instructions and
`Not Overly Burdensome to Answer
`We agree with Petitioners that these factors also favor Petitioners’
`request because Patent Owner clearly understands what documents are
`requested and producing the Final Infringement Contentions in this
`proceeding is not burdensome. See Mot. 11.
`
` Summary
`Accordingly, for the reasons explained above, we find that Petitioners
`have established that producing the Final Infringement Contentions as
`additional discovery is in the interests of justice.
`
` Patent Owner’s Arguments as to Petitioners’ Anticipated Reply Brief
`Patent Owner asserts that Petitioners are seeking to improperly bolster
`the Petition through their request for additional discovery. Opp. 2–5. Patent
`Owner complains that the Petition does not include any analysis to
`determine whether a capacitor stores non-negligible amounts of energy and
`Petitioners should not be permitted to present new evidence in their
`anticipated reply to Patent Owner’s Response that could have been presented
`in the Petition. Id. at 4–5.
`Patent Owner’s argument is premature. Petitioners have not filed a
`reply to Patent Owner’s Response, and, therefore, we do not have a
`sufficient basis on which to assess Patent Owner’s argument. To the extent
`
`6
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`IPR2021-00990
`Patent 7,110,444 B1
`
`Patent Owner seeks to raise an argument regarding Petitioners’ anticipated
`reply, Patent Owner should do so after the reply is filed.
`
` Confidentiality of the Final Infringement Contentions
`Petitioner asserts that Patent Owner identified the information in the
`Final Infringement Contentions as confidential in the related litigations.
`Mot. 2 n.1. From the arguments in the briefing on Petitioners’ Motion, it
`appears Petitioners may contest the confidentiality status designated by
`Patent Owner for purposes of this proceeding. See Reply 5 (“[Patent Owner]
`has dictated the timing and nature of the current dispute by misdesignating
`the [Final Infringement Contentions] ‘confidential.’”). To the extent
`Petitioners seek to file the confidential Final Infringement Contentions in
`this proceeding, Petitioners should file the documents under seal and the
`filing should include a motion to seal and motion for protective order along
`with the proposed protective order. See 37 C.F.R. §§ 42.14 (“Public
`availability”), 42.54(a) (“Protective order”). To the extent Petitioners
`disagree with the confidentiality designation, Petitioners’ motion to seal may
`act as a placeholder, provisionally sealing the Final Infringement
`Contentions until Patent Owner files a motion to seal in which Patent Owner
`establishes good cause for maintaining the confidentiality designation. We
`direct Patent Owner to Argentum Pharmaceuticals LLC v. Alcon Research,
`Ltd., IPR2017-01053, Paper 27 (PTAB Jan. 19, 2018) (informative), for
`guidance regarding the establishment of good cause in the context of a
`motion to seal.
`
`7
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that Petitioners’ Motion for Routine and/or Additional
`Discovery is granted;
`FURTHER ORDERED that Patent Owner shall produce its Final
`Infringement Contentions to Petitioners within three (3) business days of this
`Order.
`
`8
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`For PETITIONERS TCL Industries Holdings Co., Ltd. and Hisense Co.,
`Ltd.:
`
`Kristopher L. Reed
`Edward J. Mayle
`Matias Ferrario
`KILPATRICK TOWNSEND & STOCKTON LLP
`kreed@kilpatricktownsend.com
`tmayle@kilpatricktownsend.com
`mferrario@kilpatricktownsend.com
`
`
`For PETITIONER LG Electronics Inc.:
`
`Scott A. McKeown
`Steven Pepe
`Scott Taylor
`Matthew R. Shapiro
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`steven.pepe@ropesgray.com
`scott.taylor@ropesgray.com
`matthew.shapiro@ropesgray.com
`
`
`For PATENT OWNER:
`
`Jason S. Charkow
`Chandran B. Iyer
`Stephanie R. Mandir
`DAIGNAULT IYER LLP
`jcharkow@daignaultiyer.com
`ciyer@daignaultiyer.com
`smandir@daignaultiyer.com
`
`9
`
`
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