From:
`To:
`Cc:
`Subject:
`Date:
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`
`Matthew Smith
`Precedential_Opinion_Panel_Request
`Andrew Baluch; hzhong@irell.com; aproctor@irell.com; bsilver@irell.com; jsheasby@irell.com; #ValtrusIPR [Int]
`Google v. Valtrus, IPR2022-01497 and -01545, Precedential Opinion Panel Request
`Tuesday, June 6, 2023 10:43:47 PM
`2023-06-06_Rehearing_request_01497.pdf
`2023-06-06_Rehearing_request_01545.pdf
`
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`
`Dear Honorable Board,
`
` I
`
` write on behalf of Petitioner Google LLC (“Google”) to request Precedential Opinion Panel
`(“POP”) review of the panel’s Order Granting Additional Discovery (“Order”) issued jointly in
`IPR2022-01497 and IPR2022-01545 on May 23, 2023 (Paper 22). Attached are Petitioner’s rehearing
`requests.
`
`The Order granted additional testimonial and documentary discovery against six non-parties
`and, in the two weeks since its issuance, has resulted in nineteen document subpoenas and nineteen
`testimonial subpoenas issued under the auspices of fifteen U.S. district courts. These subpoenas, if
`issued in district court litigation, would exhaust—on a single issue—more than half of the total
`number of depositions the Patent Owner would be entitled to under the Federal Rules for all issues.
`Valtrus sought this unprecedented level of “additional discovery” in an attempt to prove a prior
`invention by reduction to practice over 22 years ago, where the Patent Owner (a recent acquirer of
`the patents) does not have the cooperation of the named inventors.
`
`The granted discovery rests on an exceptionally shaky foundation. Garmin factor 1 requires
`the party seeking discovery to show “beyond speculation” that something “useful” will be
`discovered. But rather than providing evidence that discovery is likely to uncover a single product,
`incorporating all limitations of a claim in a manner that pre-dates the prior art, the Patent Owner
`admitted in its motion that it needed the discovery to determine whether such a case was even
`possible. Furthermore, in justifying its requests for depositions and document discovery against five
`non-party inventors, the Patent Owner merely averred that “the inventors know what they invented
`and when.” Order, p. 12. The Board adopted this reasoning as satisfying Garmin factor 1. Even
`assuming the inventors “know what they invented and when,” to the month, over 22 years ago, the
`reasoning would amount to a per se rule justifying additional discovery against non-party inventors
`whenever a patent owner alleges prior invention.
`
`Professional Judgment Certifications
`
`Based on my professional judgment, I believe the Board panel decision is contrary to the
`following precedential decision of the Board: Garmin Int’l, Inc. v. Cuozzo Speed Tech., LLC, IPR2012-
`00001, Paper 26 (PTAB March 5, 2013)(precedential)(herein: “Garmin”).
`
`
`

`

`Based on my professional judgment, I believe this case requires an answer to one or more
`precedent-setting questions of exceptional importance:
`
`1. Under Garmin factor 1, does a party show evidence “beyond speculation that in fact
`something useful will be uncovered” by arguing that it needs discovery to determine
`whether useful discovery can be obtained?
`
`
`
`
`
`2. Under Garmin factor 1, is the requirement to provide evidence tending to show that
`discovery will be “useful” satisfied by showing that discovery might support a portion of a
`substantive case on a given issue?
`
`3. In a case where prior invention is alleged, is compelled non-party testimony against
`named inventors justified under Garmin factor 1 based on the reasoning that “[t]he
`inventors know what they invented and when, and therefore there is more than a mere
`allegation that this highly useful information exists”?
`
`/s/ Matthew A. Smith, counsel for Petitioner.
`Reasons for Recommending Precedential Opinion Panel Review
`
`The present case represents an unprecedented grant of discovery in inter partes review. As
`the Board has repeatedly affirmed, the statutes and legislative history require it to be “conservative”
`in grants of additional discovery, especially given the streamlined nature of the proceedings and one
`year timeframe for completing trial. See Garmin, p. 5.
`
`This case is suitable for Precedential Opinion Panel review because, if the panel’s order were
`allowed to stand, it would expand the basis upon which parties may obtain “additional discovery”,
`even against non-parties.
`
`Specifically, the Patent Owner seeks (and has indeed noticed subpoenas for) discovery
`against a non-party company and five non-party inventors, for documents and testimony related to
`potential source code, which Patent Owner hopes may uncover evidence it could use to argue a
`prior reduction to practice. In its motion for additional discovery, however, the Patent Owner
`(“Valtrus”) stated:
`
`
`The Board expressed concern that the claim chart Valtrus provided for the ’764
`patent relies on hearsay and ‘does not clearly describe when and in which
`product’ the ’764 invention was reduced to practice. See IPR2022-01497, Paper
`12 at 14-16. These deficiencies are a result of the fact that Valtrus does not
`have the actual source code and/or source-code-related information for the
`Verity K2 Catalog. The requested discovery will enable Valtrus to close that gap
`by showing exactly how and when the Verity K2 Catalog source code and/or
`source-code-related documents requested in Appendix A, coupled with the
`inventor testimony and documents requested in Appendices B-C, reduced the
`’764 invention to practice.
`
`

`

`Motion, p. 6 (Emphases added). Furthermore, in arguing that discovery from five non-party
`inventors was necessary, the Patent Owner argued that “[t]he inventors know what they invented
`and when, and therefore there is more than a mere allegation that this highly useful information
`exists.” The Board granted discovery against the non-party inventors using this reasoning. See
`Order, p. 12.
`
`
`In other words, the Patent Owner is not using the “additional discovery” process to obtain
`information that is already likely to exist based on record evidence. Instead, the Patent Owner
`needs the discovery from the non-party company and non-party inventors to determine whether
`relevant information exists, and if it does, whether it meets the relatively strict requirements that
`need to be met whenever a Patent Owner seeks to jump the line in front of an earlier-filed U.S.
`patent. The present case is a classic “fishing expedition”: discovery to determine if something useful
`can be discovered, and does not show “beyond speculation” that something “useful” will be
`discovered.
`
`The Precedential Opinion Panel should review the underlying Order, clarifying the test under
`Garmin factor 1. Specifically, the Board should clarify that discovery to determine whether
`something useful could be obtained is insufficient under Garmin factor 1. The Precedential Opinion
`Panel should further clarify that the mere observation that “[t]he inventors know what they invented
`and when”—even if taken as true where the subject matter is more than two decades old—does not
`mean that the inventors know they reduced the invention of any claim to practice in a timeframe
`that would pre-date prior art, and thus does not provide a basis “beyond speculation” that discovery
`will lead to anything “useful” under Garmin factor 1.
`Google thus respectfully requests that the Precedential Opinion Panel review the underlying Order
`to clarify and properly apply Garmin factor 1.
`
`Respectfully submitted,
`
`Counsel for Petitioner Google LLC
`
`Matthew A. Smith
`SMITH BALUCH LLP
`(202) 669-6207
`smith@smithbaluch.com
`
`
`