Trials@uspto.gov
`571-272-7822
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` Paper 29
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` Entered: June 17, 2022
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`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.
`____________
`
`IPR2021-01406
`Patent 6,411,941 B1
`____________
`
`
`Before THU A. DANG, KEVIN W. CHERRY, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`
`DANG, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Petitioner’s Motion for Additional Discovery
`35 U.S.C. § 42.51(b)(2)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 29
`
`
` Entered: June 17, 2022
`
`
`
`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.
`____________
`
`IPR2021-01406
`Patent 6,411,941 B1
`____________
`
`
`Before THU A. DANG, KEVIN W. CHERRY, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`
`DANG, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Petitioner’s Motion for Additional Discovery
`35 U.S.C. § 42.51(b)(2)
`
`
`
`
`
`
`
`IPR2021-01406
`Patent 6,411,941 B1
`
`
`INTRODUCTION
`I.
` Pursuant to our authorization email dated May 27, 2022 (Ex. 1028),
`Petitioner, Roku, Inc. and Vizio, Inc. (collectively, “Roku”), filed a Motion
`for Additional Discovery (Paper 25, “Mot.”) seeking additional discovery
`from Patent Owner, Ancora Technologies, Inc. In particular, Petitioner
`seeks 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.” Mot. 1. According to Petitioner, “Patent Owner
`said it would not oppose this motion . . . as long as they are subject to the
`proposed protective order.” Id. (citing Ex. 2038 (“Protective Order”)).
`Petitioner contends that, in Patent Owner’s Response, Patent Owner’s
`objective-indicia evidence “in the form of certain licenses for the challenged
`’941 patent” is cited to support its non-obviousness argument, wherein
`Patent Owner selectively produced three of the licenses under the Protective
`Order. Mot. 1–2 (citing PO Resp. 66–70 (citing Ex. 2029; Ex. 2031;
`Ex. 2032)). According to Petitioner, Patent Owner also references certain
`additional unproduced licenses in the Response, and “Patent Owner’s
`declarant also explicitly confirmed the existence” of these additional licenses
`other than those produced. Id. at 2 (citing PO Resp. 69–70; Ex. 2030 ¶ 7).
`Petitioner contends that, without additional discovery, “Patent Owner’s
`unverified statements would be the final word on this issue,” whereas
`“Petitioners would be unable to evaluate or rebut Patent Owner’s
`characterizations.” Id. at 3. That is, any unproduced licenses, or settlement
`agreements involving the ’941 patent that did not result in a license, “are
`
`2
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`IPR2021-01406
`Patent 6,411,941 B1
`
`necessary for Petitioners to fully evaluate Patent Owner’s objective-indicia
`arguments,” especially “where the Patent Owner is undoubtedly in
`possession of the withheld evidence.” Id.
`
`II. ANALYSIS
`Additional discovery may be ordered if the party moving for the
`discovery shows “that such additional discovery is in the interests of
`justice.” 37 C.F.R. § 42.51(b)(2); see also 35 U.S.C. § 316(a)(5) (requiring
`discovery in inter partes review proceedings to be limited to “what is . . .
`necessary in the interest of justice”). The Board has identified five factors
`(“the Garmin factors”) important in determining whether additional
`discovery is in the interests of justice. See Garmin Int’l, Inc. v. Cuozzo
`Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7 (PTAB Mar. 5,
`2013) (Paper 26) (informative) (“Garmin”).
`Petitioner alleges facts sufficient to persuade us that its request for
`discovery meets the first Garmin factor, i.e., that the requested discovery is
`based on more than a possibility and allegation of finding something useful.
`See Garmin at 6. In particular, as Petitioner points out, Patent Owner cited
`as “objective evidence” licenses for the challenged ’941 patent to support its
`non-obviousness argument, wherein Patent Owner references certain
`additional unproduced licenses in the Response, and “Patent Owner’s
`declarant also explicitly confirmed the existence” of these additional
`licenses. Mot. 2 (citing PO Resp. 69–70; Ex. 2030 ¶ 7). We are persuaded
`that, without additional discovery, Petitioner “would be unable to evaluate or
`rebut Patent Owner’s characterizations.” Id. at 3.
`
`3
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`IPR2021-01406
`Patent 6,411,941 B1
`
`
`Further, as Petitioner contends, the requested discovery is “limited to
`any unproduced licenses or settlement agreement involving the challenged
`’941 patent,” including “the additional licenses specifically identified by
`Patent Owner’s declarant.” Mot. 4. Thus, we are persuaded that Petitioner’s
`request for discovery also meets the second Garmin factor, i.e., that the
`requested discovery does not seek Patent Owner’s litigation positions or the
`underlying basis for those positions. See Garmin at 6.
`
`We are also persuaded that Petitioner’s request for discovery meets
`the third Garmin factor, i.e., that the information cannot be reasonable be
`generated without the discovery request. See Garmin at 6. As Petitioner set
`forth in its email request seeking authorization to file the Motion, Patent
`Owner “represented that confidentiality provisions of certain license
`agreements prevent it from producing them absent an order from an official
`tribunal” wherein a grant of a motion for additional discovery would resolve
`Patent Owner’s production hurdle. See Ex. 1028.
`
`Petitioner also alleges facts sufficient to persuade us that its request
`for discovery meets the fourth Garmin factor, i.e., that the requested
`discovery is easily understandable. See Garmin at 6–7. As Petitioner points
`out, “Patent Owner itself has specifically identified at least some of the
`requested documents” in its expert’s declaration, and references them in the
`Response. Mot. 5 (citing Ex. 2030).
`We are also persuaded that Petitioner’s request also meets the fifth
`Garmin factor, i.e., that the requested discovery is not overly burdensome
`for Patent Owner to answer. See Garmin at 7. As Petitioner points out, the
`requested discovery “either confirmed to exist by Patent Owner, or very
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`IPR2021-01406
`Patent 6,411,941 B1
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`likely to exist,” wherein “Patent Owner is already in possession of the
`document and has already produced related documents.” Mot. 5.
`Upon consideration of each of the Garmin factors, and for the
`foregoing reasons, we grant Petitioner’s Motion for Additional Discovery.
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Motion for Additional Discovery is
`GRANTED;
`FURTHER ORDERED that Petitioner shall serve the authorized
`Requests no later than June 21, 2022; and
`FURTHER ORDERED that, following Petitioner’s service of its
`Requests, Patent Owner shall produce and deliver to Petitioner all responsive
`documents no later than July 5, 2022. The production and delivery of the
`responsive documents shall be governed by the proposed protective order.
`Ex. 2038.
`
`
`
`
`
`
`5
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`IPR2021-01406
`Patent 6,411,941 B1
`
`
`PETITIONER:
`Jon Wright
`Lestin Kenton
`Dohm Chankong
`Richard Crudo
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jwright-PTAB@sternekessler.com
`lkenton-PTAB@sternekessler.com
`dchankong-PTAB@sternekessler.com
`rcrudo-PTAB@sternekessler.com
`PTAB@sternekessler.com
`
`PATENT OWNER:
`David Gosse
`Nicholas Peters
`Karen Wang
`FITCH, EVEN, TABIN & FLANNERY LLP
`dgosse@fitcheven.com
`ntpete@fitcheven.com
`kwang@fitcheven.com
`
`6
`
`
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