AO 88B (Rev. 02/14) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action
`
`UNITED STATES DISTRICT COURT
`for the
` Northern District of Georgia
`__________ District of __________
`
`Civil Action No.
`
`IPR2022-01545, IPR2022-01497
`
`))))))
`
`GOOGLE LLC, Petitioner
`Plaintiff
`v.
`VALTRUS INNOVATIONS LTD., Patent Owner
`
`Defendant
`
`To:
`
`SUBPOENA TO PRODUCE DOCUMENTS, INFORMATION, OR OBJECTS
`OR TO PERMIT INSPECTION OF PREMISES IN A CIVIL ACTION
`MICRO FOCUS
`900 North Point Parkway, Alpharetta, GA 30005
`(Name of person to whom this subpoena is directed)
`✔
`(cid:117) Production: YOU ARE COMMANDED to produce at the time, date, and place set forth below the following
`documents, electronically stored information, or objects, and to permit inspection, copying, testing, or sampling of the
`material:
`See attached Exhibits A, B, and C.
`
`Place:
`
`Hilton Garden Inn Atlanta North/Alpharetta
`4025 Windward Plaza
`Alpharetta, GA 30005, USA
`
`Date and Time:
`
`06/09/2023 5:00 pm
`
`(cid:117) Inspection of Premises: YOU ARE COMMANDED to permit entry onto the designated premises, land, or
`other property possessed or controlled by you at the time, date, and location set forth below, so that the requesting party
`may inspect, measure, survey, photograph, test, or sample the property or any designated object or operation on it.
`
`Place:
`
`Date and Time:
`
`The following provisions of Fed. R. Civ. P. 45 are attached – Rule 45(c), relating to the place of compliance;
`Rule 45(d), relating to your protection as a person subject to a subpoena; and Rule 45(e) and (g), relating to your duty to
`respond to this subpoena and the potential consequences of not doing so.
`05/26/2023
`Date:
`
`CLERK OF COURT
`
`Signature of Clerk or Deputy Clerk
`
`OR
`
`/s/ H. Annita Zhong
`Attorney’s signature
`
`The name, address, e-mail address, and telephone number of the attorney representing (name of party)
`, who issues or requests this subpoena, are:
`Valtrus Innovations Ltd.
`H. Annita Zhong, 1800 Avenue of the Stars, Suite 900, Los Angeles, CA 90067; hzhong@irell.com; (310) 277-1010
`Notice to the person who issues or requests this subpoena
`If this subpoena commands the production of documents, electronically stored information, or tangible things or the
`inspection of premises before trial, a notice and a copy of the subpoena must be served on each party in this case before
`it is served on the person to whom it is directed. Fed. R. Civ. P. 45(a)(4).
`
`GOOGLE 1049
`
`001
`
`

`

`AO 88B (Rev. 02/14) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action (Page 2)
`
`Civil Action No.
`
`IPR2022-01545, IPR2022-01497
`
`PROOF OF SERVICE
`(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)
`
`I received this subpoena for (name of individual and title, if any)
`.
`
`on (date)
`
`(cid:117) I served the subpoena by delivering a copy to the named person as follows:
`
`(cid:117) I returned the subpoena unexecuted because:
`
`on (date)
`
`; or
`
`Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, I have also
`tendered to the witness the fees for one day’s attendance, and the mileage allowed by law, in the amount of
`$
`.
`
`My fees are $
`
`for travel and $
`
`for services, for a total of $
`
`0.00
`
`.
`
`.
`
`I declare under penalty of perjury that this information is true.
`
`Date:
`
`Additional information regarding attempted service, etc.:
`
`Server’s signature
`
`Printed name and title
`
`Server’s address
`
`002
`
`

`

`AO 88B (Rev. 02/14) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action(Page 3)
`
`(c) Place of Compliance.
`
`Federal Rule of Civil Procedure 45 (c), (d), (e), and (g) (Effective 12/1/13)
`(ii) disclosing an unretained expert’s opinion or information that does
`not describe specific occurrences in dispute and results from the expert’s
`study that was not requested by a party.
`(C) Specifying Conditions as an Alternative. In the circumstances
`described in Rule 45(d)(3)(B), the court may, instead of quashing or
`modifying a subpoena, order appearance or production under specified
`conditions if the serving party:
`(i) shows a substantial need for the testimony or material that cannot be
`otherwise met without undue hardship; and
`(ii) ensures that the subpoenaed person will be reasonably compensated.
`
` (1) For a Trial, Hearing, or Deposition. A subpoena may command a
`person to attend a trial, hearing, or deposition only as follows:
` (A) within 100 miles of where the person resides, is employed, or
`regularly transacts business in person; or
` (B) within the state where the person resides, is employed, or regularly
`transacts business in person, if the person
` (i) is a party or a party’s officer; or
` (ii) is commanded to attend a trial and would not incur substantial
`expense.
`
` (2) For Other Discovery. A subpoena may command:
` (A) production of documents, electronically stored information, or
`tangible things at a place within 100 miles of where the person resides, is
`employed, or regularly transacts business in person; and
` (B) inspection of premises at the premises to be inspected.
`
`(d) Protecting a Person Subject to a Subpoena; Enforcement.
`
` (1) Avoiding Undue Burden or Expense; Sanctions. A party or attorney
`responsible for issuing and serving a subpoena must take reasonable steps
`to avoid imposing undue burden or expense on a person subject to the
`subpoena. The court for the district where compliance is required must
`enforce this duty and impose an appropriate sanction—which may include
`lost earnings and reasonable attorney’s fees—on a party or attorney who
`fails to comply.
`
` (2) Command to Produce Materials or Permit Inspection.
`(A) Appearance Not Required. A person commanded to produce
`documents, electronically stored information, or tangible things, or to
`permit the inspection of premises, need not appear in person at the place of
`production or inspection unless also commanded to appear for a deposition,
`hearing, or trial.
`(B) Objections. A person commanded to produce documents or tangible
`things or to permit inspection may serve on the party or attorney designated
`in the subpoena a written objection to inspecting, copying, testing, or
`sampling any or all of the materials or to inspecting the premises—or to
`producing electronically stored information in the form or forms requested.
`The objection must be served before the earlier of the time specified for
`compliance or 14 days after the subpoena is served. If an objection is made,
`the following rules apply:
`(i) At any time, on notice to the commanded person, the serving party
`may move the court for the district where compliance is required for an
`order compelling production or inspection.
` (ii) These acts may be required only as directed in the order, and the
`order must protect a person who is neither a party nor a party’s officer from
`significant expense resulting from compliance.
`
` (3) Quashing or Modifying a Subpoena.
`(A) When Required. On timely motion, the court for the district where
`compliance is required must quash or modify a subpoena that:
` (i) fails to allow a reasonable time to comply;
`(ii) requires a person to comply beyond the geographical limits
`specified in Rule 45(c);
`(iii) requires disclosure of privileged or other protected matter, if no
`exception or waiver applies; or
`(iv) subjects a person to undue burden.
`(B) When Permitted. To protect a person subject to or affected by a
`subpoena, the court for the district where compliance is required may, on
`motion, quash or modify the subpoena if it requires:
`(i) disclosing a trade secret or other confidential research,
`development, or commercial information; or
`
`(e) Duties in Responding to a Subpoena.
`
` (1) Producing Documents or Electronically Stored Information. These
`procedures apply to producing documents or electronically stored
`information:
`(A) Documents. A person responding to a subpoena to produce documents
`must produce them as they are kept in the ordinary course of business or
`must organize and label them to correspond to the categories in the demand.
`(B) Form for Producing Electronically Stored Information Not Specified.
`If a subpoena does not specify a form for producing electronically stored
`information, the person responding must produce it in a form or forms in
`which it is ordinarily maintained or in a reasonably usable form or forms.
`(C) Electronically Stored Information Produced in Only One Form. The
`person responding need not produce the same electronically stored
`information in more than one form.
`(D) Inaccessible Electronically Stored Information. The person
`responding need not provide discovery of electronically stored information
`from sources that the person identifies as not reasonably accessible because
`of undue burden or cost. On motion to compel discovery or for a protective
`order, the person responding must show that the information is not
`reasonably accessible because of undue burden or cost. If that showing is
`made, the court may nonetheless order discovery from such sources if the
`requesting party shows good cause, considering the limitations of Rule
`26(b)(2)(C). The court may specify conditions for the discovery.
`
`(2) Claiming Privilege or Protection.
`(A) Information Withheld. A person withholding subpoenaed information
`under a claim that it is privileged or subject to protection as trial-preparation
`material must:
`(i) expressly make the claim; and
`(ii) describe the nature of the withheld documents, communications, or
`tangible things in a manner that, without revealing information itself
`privileged or protected, will enable the parties to assess the claim.
`(B) Information Produced. If information produced in response to a
`subpoena is subject to a claim of privilege or of protection as
`trial-preparation material, the person making the claim may notify any party
`that received the information of the claim and the basis for it. After being
`notified, a party must promptly return, sequester, or destroy the specified
`information and any copies it has; must not use or disclose the information
`until the claim is resolved; must take reasonable steps to retrieve the
`information if the party disclosed it before being notified; and may promptly
`present the information under seal to the court for the district where
`compliance is required for a determination of the claim. The person who
`produced the information must preserve the information until the claim is
`resolved.
`
`(g) Contempt.
`The court for the district where compliance is required—and also, after a
`motion is transferred, the issuing court—may hold in contempt a person
`who, having been served, fails without adequate excuse to obey the
`subpoena or an order related to it.
`
`For access to subpoena materials, see Fed. R. Civ. P. 45(a) Committee Note (2013).
`
`003
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`004
`
`

`

`
`
`DOCUMENTS AND THINGS REQUESTED
`
`REQUEST FOR PRODUCTION NO. 1
`
`
`
`Document(s) or thing(s) sufficient to show the content and operation of Verity
`
`K2 software, including for the Verity K2 Toolkit and Verity K2 Catalog, as it existed
`
`on or before March 12, 2001. Responsive documents or things include, for example,
`
`a copy of Verity K2 source code, including for the Verity K2 Toolkit and Verity K2
`
`Catalog and written descriptions of the same as it existed on or before March 12,
`
`2001. Responsive documents or things further include computer program printouts
`
`for Verity K2 software deposited with the United States Copyright Office with the
`
`registration number TX0005762136, entitled “Verity developer’s kit v2.7.”
`
`
`
`REQUEST FOR PRODUCTION NO. 2
`
`
`
`Document(s) or thing(s) sufficient to show the dates of creation of the Verity
`
`K2 software, including the Verity K2 Toolkit and Verity K2 Catalog, identified
`
`under Request #1. Responsive documents or things may include, for example:
`
`• documents reflecting the earliest date of use of the Verity software,
`
`including the Verity K2 Toolkit and Verity K2 Catalog identified under
`
`Request #1;
`
`
`
`
`
`- 1 -
`
`
`
`005
`
`

`

`
`
`• documents reflecting the earliest publication of the Verity K2 software,
`
`including the Verity K2 Toolkit and, Verity K2 Catalog identified under
`
`Request #1;
`
`• documents reflecting the earliest description of the Verity K2 software,
`
`including the Verity K2 Toolkit and Verity K2 Catalog identified under
`
`Request #1; and
`
`• documents indicating the author(s) of or contributor(s) to the Verity K2
`
`software, including the Verity K2 Toolkit and Verity K2 Catalog identified
`
`under Request #1;
`
`• documents reflecting when customer(s) were first offered, first purchased
`
`or first used the Verity K2 software, including the Verity K2 Toolkit and
`
`Verity K2 Catalog identified under Request #1.
`
`
`
`
`
`- 2 -
`
`
`
`
`
`
`
`
`
`006
`
`

`

`
`
`REQUEST FOR DEPOSITION
`
`DEPOSITION TOPIC NO. 1
`
`Facts and circumstances relating to the acquisition and hosting by Micro
`
`Focus and/or OpenText of the Verity software, including the Verity K2 Toolkit and
`
`Verity K2 Catalog, including standard practices for storing, cataloging, and
`
`authenticating the same.
`
`
`
`DEPOSITION TOPIC NO. 2
`
`The operation of the Verity K2 software, including the Verity K2 Toolkit and
`
`Verity K2 Catalog, for which you produced documents and things in response to
`
`Requests #1 and #2.
`
`
`
`DEPOSITION TOPIC NO. 3
`
`The authenticity and business record status of all documents and things
`
`produced in response to Requests #1 and #2.
`
`
`
`DEPOSITION TOPIC NO. 4
`
`The search for and collection of documents and things in response to Requests
`
`#1 and #2.
`
`
`
`
`
`- 3 -
`
`
`
`007
`
`

`

`EXHIBIT B
`EXHIBIT B
`
`
`
`
`
`
`
`
`
`008
`
`

`

`Trials@uspto.gov
`571-272-7822
`
`Paper 22
`Date: May 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`VALTRUS INNOVATIONS LIMITED,
`Patent Owner.
`
`IPR2022-01497 (Patent 6,738,764 B2)
`IPR2022-01545 (Patent 6,728,704 B2) 1
`
`
`
`
`
`
`
`
`
`Before NORMAN H. BEAMER, SHARON FENICK, and
`PAUL J. KORNICZKY, Administrative Patent Judges.
`KORNICZKY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each
`proceeding. The parties are not authorized to use this style heading for any
`subsequent papers.
`
`
`
`009
`
`

`

`IPR2022-01497 (Patent 6,738,764 B2)
`IPR2022-01545 (Patent 6,728,704 B2)
`INTRODUCTION
`I.
`On April 24, 2023, after conferencing with the parties, we issued an
`order granting Patent Owner’s request to file a motion for additional
`discovery, and authorizing Petitioner to file an opposition. IPR2022-01497,
`Paper 142; IPR2022-01545, Paper 14. Patent Owner filed a Motion for
`Additional Discovery in each case. IPR2022-01497, Paper 16 (“Mot.”);
`IPR2022-01545, Paper 16. Petitioner filed its Opposition to Patent Owner’s
`Motion in each case. IPR2022-01497, Paper 17 (“Opp.”); IPR2022-01545,
`Paper 17. As authorized (IPR2022-01497, Paper 19; IPR2022-01545, Paper
`19), Patent Owner filed a Reply in each case. IPR2022-01497, Paper 20
`(“Reply”); IPR2022-01545, Paper 20.
`After considering the arguments, evidence, and facts before us, we
`determine that:
`(1) Patent Owner has satisfied its burden to establish that it is in the
`interest of justice to grant Patent Owner’s Motion for Additional Discovery
`from inventors Jianchang Mao, Prabhakar Raghavan, Rajat Mukherjee,
`Michel Tourn, and Mani Abrol, but not inventor Panyiotis Tsaparas; and
`(2) Patent Owner has satisfied its burden to establish that it is in the
`interest of justice to grant Patent Owner’s Motion for Additional Discovery
`
`
`2 We cite to documents in IPR2022-01497. The same or substantially the
`same statements were made in the papers in each proceeding. The main
`difference is that, in the -01497 case, Patent Owner seeks to antedate March
`13, 2001, the Li reference’s filing date and, in the -01545 case, Patent Owner
`seeks to antedate July 24, 2001, the Bushee reference’s filing date.
`Additionally, while we address all inventors herein, the claims of different
`patents are challenged in each proceeding, and the patents list overlapping
`but not identical sets of inventors.
`
`
`2
`
`010
`
`

`

`IPR2022-01497 (Patent 6,738,764 B2)
`IPR2022-01545 (Patent 6,728,704 B2)
`from Micro Focus, but not Open Text Corp. Thus, for the reasons that
`follow, Patent Owner’s Motion is granted-in-part and denied-in–part.
`
`
`II. PATENT OWNER’S DISCOVERY REQUESTS
`Patent Owner contends that Petitioner’s prior art references –– Li
`(U.S. Patent 7,231,381 B2) in the -01497 case and Bushee (U.S. Patent
`6,711,569 B1) in the -01545 case –– do not qualify as prior art because
`Patent Owner is able to antedate the filing dates of these references using the
`“Verity K2 source code” which contains the claimed inventions and was
`publicly available before the references’ filing dates. Mot. 1. Patent Owner
`argues that the Verity K2 product and its source code were publicly
`available as early as January 2001. Mot. 4 (citing Ex. 2004). And, in
`the -01497 case, the inventors’ declaration was signed on April 18, 2001,
`less than a month after Li’s filing date (March 13, 2001). IPR2022-01497,
`Inst. Dec. 13. Similarly, in the -01545 case, the inventors’ declarations were
`signed on August 3, 6, and 8, 2001, a few weeks after Bushee’s filing date
`(July 24, 2001). IPR2022-01545, Inst. Dec. 27.
`To antedate the Li and Bushee references, Patent Owner wants
`discovery from Micro Focus and OpenText Corp. and from the inventors of
`U.S. Patents 6,738,764 B2 (“the ’764 patent”) and U.S. Patent 6,728,704
`(“the ’704 patent”), i.e., Jianchang Mao, Prabhakar Raghavan, Rajat
`Mukherjee, Michel Tourn, Mani Abrol, and Panyiotis Tsaparas.
`
`A. Discovery from Micro Focus/OpenText
`Patent Owner requests production regarding the “Verity K2 source
`code” which it argues is “currently hosted” by Micro Focus, an entity which
`“was recently acquired by OpenText Corp.” and testimony of “a corporate
`
`3
`
`011
`
`

`

`IPR2022-01497 (Patent 6,738,764 B2)
`IPR2022-01545 (Patent 6,728,704 B2)
`representative of Micro Focus or OpenText Corp.” about this source code.
`Mot. 1, 4. Patent Owner seeks documents and information about the
`contents of the source code and its earliest date of use, publication, and sale.
`Mot. 1, 4.
`Patent Owner’s requests for documents and things from Micro Focus
`and OpenText are reproduced below. Mot. 14–15 (Appendix A).
`REQUEST FOR PRODUCTION NO. 1
`Document(s) or thing(s) sufficient to show the content
`and operation of Verity software, including for the Verity K2
`Toolkit and Verity K2 Catalog, as it existed on or before March
`12, 2001. Responsive documents or things include, for
`example, a copy of Verity source code, including for the Verity
`K2 Toolkit and Verity K2 Catalog and written descriptions of
`the same as it existed on or before March 12, 2001. Responsive
`documents or things further include computer program
`printouts for Verity software deposited with the United States
`Copyright Office with the registration number TX0005762136,
`entitled “Verity developer’s kit v2.7.
`REQUEST FOR PRODUCTION NO. 2
`Document(s) or thing(s) sufficient to show the dates of
`creation of the Verity software, including the Verity K2 Toolkit
`and Verity K2 Catalog, identified under Request #1, as well as
`the date of public use and availability. Responsive documents
`or things may include, for example:
`• documents reflecting the earliest date of use of the
`Verity software, including the Verity K2 Toolkit, Verity
`K2 Catalog, or related software;
`• documents reflecting the earliest publication of the
`Verity software, including the Verity K2 Toolkit, Verity
`K2 Catalog, or related software;
`• documents reflecting the earliest description of the
`Verity software, including the Verity K2 Toolkit, Verity
`K2 Catalog, or related software;
`
`4
`
`012
`
`

`

`IPR2022-01497 (Patent 6,738,764 B2)
`IPR2022-01545 (Patent 6,728,704 B2)
`• documents indicating the author(s) of or contributor(s)
`to the Verity software, including the Verity K2 Toolkit,
`Verity K2 Catalog, or related software;
`• documents reflecting customer(s) that were offered,
`purchased or used the Verity software, including the
`Verity K2 Toolkit, Verity K2 Catalog, or related
`software, and the earliest dates of those purchases or
`uses;
`• following the earliest date of publication, use, sale
`and/or offer for sale, documents reflecting the extent of
`any subsequent and/or continuing public availability of
`the Verity software, including the Verity K2 Toolkit,
`Verity K2 Catalog, or related software.
`Patent Owner’s deposition topics for Micro Focus and OpenText are
`reproduced below. Mot. 15–17 (Appendix A).
`DEPOSITION TOPIC NO. 1
`Facts and circumstances relating to the acquisition
`and hosting by Micro Focus and/or OpenText of the
`Verity software, including the Verity K2 Toolkit, Verity
`K2 Catalog, or related software, including standard
`practices for storing, cataloging, and authenticating the
`same.
`DEPOSITION TOPIC NO. 2
`The operation of the Verity software, including the
`Verity K2 Toolkit, Verity K2 Catalog, or related
`software, for which you produced documents and things
`in response to Requests #1 and #2.
`DEPOSITION TOPIC NO. 3
`The date of first public availability, public
`demonstration, sale or offer for sale in the United States
`of every version of the Verity software, including the
`Verity K2 Toolkit, Verity K2 Catalog, or related
`software, for which you produced documents and things
`in response to Requests #1 and #2.
`
`5
`
`013
`
`

`

`IPR2022-01497 (Patent 6,738,764 B2)
`IPR2022-01545 (Patent 6,728,704 B2)
`DEPOSITION TOPIC NO. 4
`After the date of first public availability, public
`demonstration, sale or offer for sale in the United States
`of any Verity software for which you produced
`documents and things in response to Requests #1 and #2,
`the extent of any subsequent and/or continuing public
`availability of such Verity software.
`DEPOSITION TOPIC NO. 5
`The authenticity, business record status, public
`availability of all documents and things produced in
`response to Requests #1 and #2.
`DEPOSITION TOPIC NO. 6
`The search for and collection of documents and
`things in response to Requests#1 and #2.
`
`
`
`B. Discovery from the Inventors
`Patent Owner seeks from the inventors of the ’764 and ‘704 patents
`testimony and document production regarding the conception and reduction
`to practice of the claimed inventions. Mot. 2. Specifically, Patent Owner
`seeks to depose the following inventors: Jianchang Mao, Prabhakar
`Raghavan, Rajat Mukherjee, Michel Tourn, Mani Abrol, and Panyiotis
`Tsaparas. Id. Mr. Tsaparas “is believed to reside outside of the United
`States.” Id. Patent Owner requests a total of eight hours for each of these
`depositions (four hours for each patent). Id.
`Patent Owner’s request for documents and things in the -01545 case is
`reproduced below. Mot. 18–21 (Appendix B3).
`
`
`3 Appendix B is directed to the inventors of the ’704 patent, claims of which
`are the subject of the challenge in the -01545 case. Appendix C,
`substantially similar except directed to the ’764 patent and substituting
`
`6
`
`014
`
`

`

`IPR2022-01497 (Patent 6,738,764 B2)
`IPR2022-01545 (Patent 6,728,704 B2)
`REQUEST FOR PRODUCTION NO. 1
`Document(s) or thing(s) sufficient to show the conception and
`reduction to practice of the claimed invention of U.S. Patent
`No. 6,728,704. Responsive documents or things may include,
`for example:
`• inventor or lab notebooks;
`• diaries and calendars;
`• invention disclosure documents;
`• draft patent applications;
`• documents relating to the preparation, filing or prosecution of
`the patent application, including correspondence with
`prosecuting attorney(ies);
`• drafts or copies of articles, abstracts, manuals and
`presentations relating to the subject matter of pre-2002 adaptive
`ranking of search results.
`• E-mails or posts relating to the subject matter of pre-2002
`adaptive ranking of search results.
`• Source code or software relating to the subject matter of
`adaptive ranking of search results created on or before July 23,
`2001.
`Patent Owner’s deposition topics for the inventors in the -01545 case
`
`are reproduced below. Mot. 20–21 (Appendix B).
`DEPOSITION TOPIC NO. 1
`Facts and circumstances relating to the conception,
`development, and testing of any subject matter claimed in U.S.
`Patent No. 6,728,704, including the decision to develop the
`subject matter, the time involved in the development, and the
`timing of the reduction to practice of the claimed invention.
`
`
`
`
`March 12, 2001 for July 23, 2001, is directed to the inventors of the ’764
`patent in the -01497 case.
`
`7
`
`015
`
`

`

`IPR2022-01497 (Patent 6,738,764 B2)
`IPR2022-01545 (Patent 6,728,704 B2)
`DEPOSITION TOPIC NO. 2
`Facts and circumstances relating to the preparation, filing,
`or prosecution of each application relating to U.S. Patent No.
`6,728,704, including communications with any prosecuting
`attorney and other named inventors of U.S. Patent No. 6,728,704,
`and the timing of said applications and communications.
`DEPOSITION TOPIC NO. 3
`description,
`any written
`Your
`knowledge
`of
`communication, or drawing of any subject matter claimed in U.S.
`Patent No. 6,728,704that was made or prepared before the patent
`application was filed, and the timing of the same.
`DEPOSITION TOPIC NO. 4
`Your knowledge of any products embodying any
`invention claimed in U.S. Patent No. 6,728,704, particularly
`Verity software, including the timing of each product’s sale,
`marketing, manufacture, and use, as well as the features of any
`such product relevant to the U.S. Patent No. 6,728,704.
`
`
`
`III. DISCUSSION
`In an inter partes review, a party seeking discovery beyond what is
`expressly permitted by rule must do so by motion, and must show that such
`additional discovery is “necessary in the interest of justice.” 35 U.S.C.
`§ 316(a)(5); see 37 C.F.R. § 42.51(b)(2)(i). Patent Owner, as the movant,
`bears the burden of demonstrating that it is entitled to the additional
`discovery sought. 37 C.F.R. § 42.20(c). We consider the five Garmin
`factors in determining whether additional discovery is necessary in the
`interest of justice. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-
`00001, Paper 26 at 6-7 (PTAB. Mar. 5, 2013) (precedential). The five
`Garmin factors are:
`
`8
`
`016
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`IPR2022-01497 (Patent 6,738,764 B2)
`IPR2022-01545 (Patent 6,728,704 B2)
`(1) whether there exists more than a possibility and mere allegation
`that something useful will be discovered;
`(2) whether the requests seek the other party’s litigation positions and
`the underlying basis for those positions;
`(3) whether the moving party has the ability to generate equivalent
`information by other means;
`(4) whether the moving party has provided easily understandable
`instructions; and
`(5) whether the requests are overly burdensome. Id.
`
`A. Garmin Factor 1: Useful Information
`The first Garmin factor asks whether the party seeking additional
`discovery demonstrates more than “[t]he mere possibility of finding
`something useful, and mere allegation something useful will be found.”
`Garmin, Paper 26 at 6. “The party requesting discovery should already be in
`possession of evidence tending to show beyond speculation that in fact
`something useful will be uncovered.” Id. “Useful” in this context means
`“favorable in substantive value to a contention of the party moving for
`discovery,” not just “relevant” or “admissible.” Id. at 7.
`Under this first factor, Patent Owner argues that the discovery it seeks
`is necessary and in the interest of justice because “[a]ntedating the Bushee
`and Li references, and thereby showing that the references do not qualify as
`prior art, ‘requires documentary support, from which factual findings and
`inferences are drawn, in application of the rules and law of conception,
`reduction to practice, and diligence.’” Mot. 2–3.
`
`
`9
`
`017
`
`

`

`IPR2022-01497 (Patent 6,738,764 B2)
`IPR2022-01545 (Patent 6,728,704 B2)
`The Micro Focus/OpenText Information
`As to the requested Micro Focus/OpenText information, Petitioner
`argues the evidence shows that the Verity K2 source code was publicly
`available before the filing dates of Li and Bushee. Mot. 4 (citing Exs. 2004–
`2008). Relying, in part, on its two claim charts (i.e., Ex. 2026 in the -01497
`case and Ex. 2024 in the -01545 case), Patent Owner argues that public
`records about the Verity K2 source code cited in the claim charts show that
`the Verity K2 source code practiced all of the limitations in the claimed
`inventions. Id. at 4–5.
`Petitioner argues that Garmin Factor 1 weighs against discovery
`because Patent Owner’s claim chart is “attorney-created” and not evidence.
`Opp. 6.
`We do not agree with Petitioner’s argument. While we agree that
`Patent Owner’s two claim charts are not evidence, the claim charts
`adequately cite to exhibits relating to the Verity K2 product which
`adequately show for purposes of this motion that Patent Owner’s contentions
`regarding the Verity K2 source code are more than mere speculation.
`Petitioner does not argue otherwise. Patent Owner’s evidence tends to show
`beyond speculation that something “useful” and “favorable in substantive
`value” to Patent Owner’s contentions will be uncovered from the Verity K2
`source code. Garmin, Paper 26 at 6.
`Patent Owner argues that
`The public record shows that the Verity source code (or at least
`documentation describing the source code) that [Patent Owner]
`Valtrus seeks is in the possession, custody, or control of Micro
`Focus and/or OpenText, raising more than a possibility and mere
`allegation that useful information will be discovered through
`Valtrus’s requests in Appendix A.
`
`10
`
`018
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`IPR2022-01497 (Patent 6,738,764 B2)
`IPR2022-01545 (Patent 6,728,704 B2)
`Mot. 4.
`Petitioner argues that Micro Focus was a British company until its
`acquisition by OpenText, that OpenText is a Canadian corporation, and there
`is no “reason to believe discoverable information is located in the United
`States rather than at the companies’ headquarters.” Opp. 1, 4.
`We do not agree. Patent Owner adequately shows that one of Micro
`Focus’s U.S. entities has custody, control, or possession of the Verity K2
`source code and other requested information. Reply 2. The parties do not
`dispute that Micro Focus maintained custody, control, or possession of the
`Verity K2 source code between 2016 and at least until earlier this year, when
`Micro Focus was acquired by OpenText. Mot. 1, 4; Opp. 2; Reply 1–3.
`Micro Focus continues to maintain corporate entities in the United States.
`See Ex. 2034. Finally, we find it significant that Micro Focus’s U.S.-based
`in-house counsel did not take the position that the requested information
`relating to the Verity copyright deposit is not available, only that Micro
`Focus would not voluntarily provide the information. Reply 3; Ex. 2045
`¶¶ 3–5. Moreover, even if Micro Focus no longer has physical custody and
`possession of the Verity K2 source code, it likely has sufficient control and
`the right or practical ability to secure or compel production of the source
`code if it continues to sell the Verity K2 products in the United States. Thus,
`Patent Owner provides adequate evidence tending to show beyond
`speculation that something useful will be uncovered from Micro Focus.
`Garmin, Paper 26 at 7.
`As to OpenText, Patent Owner concedes that discovery from
`OpenText is “likely irrelevant” because Micro Focus has office locations in
`eleven states and has agents for service of process in the United States so
`that Patent Owner will likely be able to obtain the requested production from
`
`11
`
`019
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`IPR2022-01497 (Patent 6,738,764 B2)
`IPR2022-01545 (Patent 6,728,704 B2)
`a U.S. corporation. Response 3. Thus, Patent Owner does not provide
`evidence tending to show beyond speculation that something useful will be
`uncovered from OpenText. Garmin, Paper 26 at 7.
`We determine that the first Garmin factor weighs in favor of allowing
`the requested discovery from Micro Focus, but not OpenText.
`
`The Inventor Information
`As to the inventor information, Patent Owner argues that “it is highly
`likely that useful information will be discovered” because “the inventors
`know what they inv