`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`ROKU, INC. and VIZIO, INC.,
`Petitioner
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner
`
`
`____________________
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`____________________
`
`
`
`
`PETITIONER’S UNOPPOSED MOTION FOR
`ADDITIONAL DISCOVERY
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`TABLE OF CONTENTS
`
`I.
`II.
`
`B.
`
`C.
`
`STATEMENT OF THE FACTS .................................................................... 1
`THE PARTIES HAVE REACHED AN AGREEMENT FOR PATENT
`OWNER TO PRODUCE ADDITIONAL DOCUMENTS BUT REQUIRE
`ACTION FROM THE BOARD. .................................................................... 2
`III. THE INTERESTS OF JUSTICE SUPPORT GRANTING ADDITIONAL
`DISCOVERY. ................................................................................................ 2
`A. Garmin Factor 1: The requested discovery is based on more
`than a mere possibility of finding something useful. ............................ 4
`Garmin Factor 2: The requested discovery does not seek
`Ancora’s litigation positions or the basis for those positions. .............. 4
`Garmin Factor 3: The information cannot reasonably be
`generated without the discovery request. .............................................. 4
`D. Garmin Factor 4: The requested discovery
`is easily
`understandable. ...................................................................................... 5
`Garmin Factor 5: The requested discovery is not overly
`burdensome for Patent Owner to answer. ............................................. 5
`IV. CONCLUSION ............................................................................................... 5
`
`
`E.
`
`
`
`
`
`- i -
`
`
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`PETITIONER’S UPDATED EXHIBIT LIST
`
`Description
`U.S. Patent No. 6,411,941 to Mullor et al. (“’941 Patent”)
`Image File Wrapper of U.S. Patent No. 6,411,941 (“’941 Patent
`File History”)
`Declaration of Andrew Wolfe, Ph.D. (“Wolfe Decl.”)
`U.S. Patent No. 4,658,093 (“Hellman”)
`U.S. Patent No. 5,892,906 (“Chou”)
`U.S. Patent No. 5,933,498 (“Schneck”)
`Scheduling Order, Ancora Techs., Inc. v. TCT Mobile (US),
`Inc., No. 8:19-cv-2192 (C.D. Cal. Mar. 17, 2020) (ECF No.
`34)
`In re: Coronavirus Public Emergency, Order Concerning
`Phased Reopening of the Court, General Order No. 20-09,
`United States District Court for the Central District of
`California, Aug. 6, 2020
`Civil Docket, Ancora Techs., Inc. v. Sony Mobile Commc’ns
`AB, No. 1:19-cv-01703 (D. Del.)
`Civil Docket, Ancora Techs., Inc. v. Lenovo Grp. Ltd., No.
`1:19-cv-01712 (D. Del.)
`Claim Construction Order, Ancora Techs., Inc. v. Apple Inc., No.
`4:11-cv-06357 (N.D. Cal. Dec. 31, 2012) (ECF No. 107)
`Final Claim Constructions of the Court, Ancora Techs., Inc. v.
`LG Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. June 2, 2020)
`(ECF No. 69)
`Supplemental Claim Construction Order, Ancora Techs., Inc. v.
`LG Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. Aug. 19, 2020)
`(ECF No. 93)
`Joint Claim Construction and Prehearing Statement, Ancora
`Techs., Inc. v. TCT Mobile (US), Inc., No. 8:19-cv-2192 (C.D.
`Cal. July 17, 2020) (ECF No. 49)
`European Patent Application No. EP 0766165A2 (“’165
`Application”)
`U.S. Patent No. 5,724,425 (“’425 Patent”)
`U.S. Patent No. 6,138,236 (“’236 Patent”)
`U.S. Patent No. 5,802,592 (“’592 Patent”)
`U.S. Patent No. 5,835,594 (“’594 Patent”)
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`1016
`1017
`1018
`1019
`
`
`
`- ii -
`
`
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`
`Description
`Telephonic Markman Hearing, Ancora Techs., Inc. v. TCT
`Mobile (US), Inc., et al., No. 8:19-cv-2192 (C.D. Cal. Oct. 15,
`2020) (ECF No. 60)
`Telephonic Markman Hearing, Ancora Techs., Inc. v. TCT
`Mobile (US), Inc., et al., No. 8:19-cv-2192 (C.D. Cal. Oct. 15,
`2020) (ECF No. 69)
`Complaint, Ancora Techs., Inc. v. TCL Corp., et al., No. 4:19-cv-
`00624 (E.D. Tex. Aug. 27, 2019) (ECF No. 1)
`U.S. Patent No. 5,734,819 (“Lewis”)
`File Wrapper of Ex Parte Reexamination of U.S. Patent No.
`6,411,941, Control No. 90/010,560 (“’560 Reexam File
`Wrapper”)
`Order Re: Joint Stipulation Re Stay Pending Inter Partes
`Review, Ancora Techs., Inc. v. Vizio, Inc., No. 2:21-cv-08534
`(C.D. Cal.) (ECF No. 78)
`Order Granting Joint Motion to Stay Pending Inter Partes
`Review, Ancora Techs., Inc. v. Roku, Inc., No. 6:21-cv-00737
`(W.D. Tex.) (ECF No. 33)
`Order Granting Joint Motion to Stay Pending Inter Partes
`Review, Ancora Techs., Inc. v. Nintendo Co., Ltd., et al., No.
`6:21-cv-00738 (W.D. Tex.) (ECF No. 46)
`Board Email Authorizing Motion For Additional Discovery, May
`27, 2022
`
`Exhibit No.
`
`1020
`
`1021
`
`1022
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`- iii -
`
`
`
`
`
`
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`Roku, Inc. and Vizio, Inc. (“Petitioner”) seek production of all unproduced
`
`licenses or settlement agreements involving the challenged ’941 patent, including
`
`at least the additional unproduced licenses that were explicitly cited by Patent
`
`Owner and its declarant in its papers. Patent Owner has alleged that it has not
`
`produced all of its agreements involving the ’941 patent because of confidentiality
`
`provisions associated with those agreements. But in a meet-and-confer preceding
`
`this motion, Patent Owner said it would not oppose this motion requesting an order
`
`requiring it to produce its additional ’941 patent licenses as long as they are subject
`
`to the proposed protective order (EX2038). Consistent with this agreement
`
`between Petitioner and Patent Owner, Petitioner submits this targeted additional
`
`discovery request under 37 C.F.R. § 42.51(b)(2), which the Board authorized by
`
`email dated May 25, 2022. EX1028. As shown below, the motion satisfies all five
`
`“Garmin factors” set forth in Garmin Int’l Inc. v. Cuozzo Speed Techs. LLC,
`
`IPR2012-00001, Paper No. 26, at 6–7 (P.T.A.B. Mar. 5, 2013) (precedential).
`
`I.
`
`STATEMENT OF THE FACTS
`In its POR, Patent Owner argues that objective evidence in the form of
`
`certain licenses for the challenged ’941 patent support its non-obviousness
`
`arguments. POR, 66-70. In support, Patent Owner selectively produced three
`
`licenses under the Protective Order. See EX2029, EX2031, EX2032 (all designated
`
`as Confidential and produced under proposed protective order EX2038).
`
`- 1 -
`
`
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`In addition to these produced licenses, Patent Owner also references certain
`
`additional unproduced licenses in its POR. See POR [Confidential], 69-70.
`
`Moreover, Patent Owner’s declarant explicitly confirmed the existence of
`
`additional licenses other than those produced so far. See EX2030 (Confidential),
`
`¶7.
`
`During a meet-and-confer on May 25, Patent Owner represented that
`
`confidentiality provisions of certain license agreements prevent it from producing
`
`the additional licenses absent an order from an official tribunal. EX1028.
`
`II. THE PARTIES HAVE REACHED AN AGREEMENT FOR PATENT
`OWNER TO PRODUCE ADDITIONAL DOCUMENTS BUT
`REQUIRE ACTION FROM THE BOARD.
`Patent Owner has agreed not to oppose this motion as long as the requested
`
`documents will be subject to the proposed protective order (EX2038), and will
`
`produce the requested licenses upon entry of an order from the Board in this
`
`proceeding. EX1028. The Board’s grant of this motion is therefore merely a
`
`condition to the parties’ agreement. This alone should be sufficient for the Board to
`
`grant the motion. 37 C.F.R. § 41.51(b)(2)(i) (“The parties may agree to additional
`
`discovery between themselves”).
`
`III. THE INTERESTS OF JUSTICE SUPPORT GRANTING
`ADDITIONAL DISCOVERY.
`The Garmin factors also support granting this motion.
`
`As Patent Owner has itself confirmed, the three licenses produced by Patent
`
`- 2 -
`
`
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`Owner do not represent the full universe of licenses or settlement agreements
`
`involving the ’941 patent. Patent Owner characterizes these additional unproduced
`
`licenses, along with the already produced licenses, as “confirm[ing] the value of
`
`the ’941 patent.” POR [Confidential], 70. In support, Patent Owner’s declarant
`
`further stated the total amount of licensing revenue from both the produced and
`
`unproduced licenses. EX2030 [Confidential], ¶7.
`
`Without additional discovery, Patent Owner’s unverified statements would
`
`be the final word on this issue. Petitioner would be unable to evaluate or rebut
`
`Patent Owner’s characterizations. Any unproduced licenses, or settlement
`
`agreements involving the ’941 patent that did not result in a license, are necessary
`
`for Petitioner to fully evaluate Patent Owner’s objective-indicia arguments. Justice
`
`is not served by allowing Patent Owner to selectively produce evidence that
`
`allegedly supports patentability, but withhold potentially conflicting evidence of
`
`the same character. This is especially true where the Patent Owner is undoubtedly
`
`in possession of the withheld evidence. Accordingly, discovery of any unproduced
`
`licenses (or settlement agreements that did not result in a license) is necessary to
`
`permit Petitioner fully develop its rebuttal to Patent Owner’s objective-indicia
`
`arguments.
`
`All five Garmin factors weigh in favor of granting this additional discovery.
`
`- 3 -
`
`
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`A. Garmin Factor 1: The requested discovery is based on more than
`a mere possibility of finding something useful.
`The requested discovery is limited to any unproduced licenses or settlement
`
`agreements involving the challenged ’941 patent, including at least the additional
`
`licenses specifically identified by Patent Owner’s declarant. Additional
`
`unproduced licenses exist and Patent Owner currently possesses them. Their
`
`production would be useful to complete the record for this proceeding and permit
`
`Petitioner the opportunity to fully respond to Patent Owner’s objective evidence
`
`arguments. Petitioner cannot adequately rebut Patent Owner’s arguments without
`
`reviewing all license agreements involving the ’941 patent.
`
`B. Garmin Factor 2: The requested discovery does not seek Ancora’s
`litigation positions or the basis for those positions.
`The requested documents contain factual evidence related to Patent Owner’s
`
`claim that objective indicia of non-obviousness support its patentability arguments.
`
`The documents are not believed to include Patent Owner’s litigation positions (or
`
`the basis for such positions).
`
`C. Garmin Factor 3: The information cannot reasonably be
`generated without the discovery request.
`The requested documents are Patent Owner’s confidential documents and
`
`Petitioner is not currently aware of a way to obtain them from any other source
`
`without this discovery request. Moreover, the documents can be produced under
`
`the current proposed protective order (not yet granted), which provides additional
`
`- 4 -
`
`
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`
`confidentiality protections.
`
`D. Garmin Factor 4: The requested discovery is easily
`understandable.
`The requested discovery is easily understandable because Patent Owner
`
`itself has specifically identified at least some of the requested documents in
`
`EX2030 and references them in the POR. The request for all unproduced licenses
`
`or settlement agreements is clear on its face.
`
`E. Garmin Factor 5: The requested discovery is not overly
`burdensome for Patent Owner to answer.
`The requested discovery is limited to specific documents either confirmed to
`
`exist by Patent Owner, or very likely to exist. Patent Owner is already in
`
`possession of the documents and has already produced related documents. Patent
`
`Owner therefore has limited, if any, search or production burden responding to this
`
`request. And the current proposed protective order, once granted, will be in place
`
`to protect confidentiality of the agreements. Moreover, there should be no impact
`
`on the timing of the IPR as long as the documents are timely produced.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully asks the Board to grant
`
`Petitioner’s motion for additional discovery and that it order Patent Owner to
`
`produce all unproduced licenses or settlement agreements involving the challenged
`
`’941 patent, including at least the additional unproduced licenses that were
`
`explicitly cited by Patent Owner and its declarant in its papers.
`
`- 5 -
`
`
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`
`
`
`
`
`
`
`
`
`
`
`/Jon E. Wright/
`
`
`
`
`
`
`Jon E. Wright, Reg. No. 50,720
`Attorney for Petitioner Roku, Inc.
`
`Date: June 6, 2022
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`- 6 -
`
`
`
`Case IPR2021-01406
`U.S. Patent No. 6,411,941
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`The undersigned certifies that true and correct copies of the above-captioned
`
`PETITIONER'S MOTION FOR ADDITIONAL DISCOVERY and Exhibit
`
`1028 were served in their entireties on June 6, 2022 upon the following parties via
`
`electronic mail:
`
`David A. Gosse
`Nicholas T. Peters
`Karen J. Wang
`FITCH, EVEN, TABIN & FLANNERY LLP
`ancora-ipr@fitcheven.com
`dgosse@fitcheven.com
`ntpete@fitcheven.com
`kwang@fitcheven.com
`
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`
` /Jon E. Wright/
`Jon E. Wright, Reg. No. 50,720
`Attorney for Petitioner Roku, Inc.
`
`
`
`
`
`Date: June 6, 2022
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`18433239.1
`
`
`
`
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