IPR2024-00283
`Patent 6,993,658
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`AMAZON.COM, INC.
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`Petitioners,
`v.
`DYNAPASS IP HOLDINGS LLC
`
`Patent Owner
`__________________
`Inter Partes Review No. IPR2024-00283
`Patent No. 6,993,658
`
`DYNAPASS IP HOLDINGS LLC’S
`MOTION FOR ADDITIONAL DISCOVERY
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`Patent 6,993,658
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`AMAZON.COM, INC.
`
`Petitioners,
`v.
`DYNAPASS IP HOLDINGS LLC
`
`Patent Owner
`__________________
`Inter Partes Review No. IPR2024-00283
`Patent No. 6,993,658
`
`DYNAPASS IP HOLDINGS LLC’S
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`IPR2024-00283
`Patent 6,993,658
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`Exhibit
`2001
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`2002
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`2003
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`PATENT OWNER’S EXHIBIT LIST
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`Description
`Email authorizing Patent Owner to file a Motion for Additional
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`Discovery (Mar. 21, 2024).
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`Dynapass IP Holdings LLC’s Discovery Requests to Petitioner.
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`Email correspondence between Patent Owner and Petitioner
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`regarding Patent Owner’s request that Petitioner identify whether
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`it has ever been a direct or indirect member of Unified Patents.
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`2004
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`https://www.unifiedpatents.com/success.
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`IPR2024-00283
`Patent 6,993,658
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`Pursuant to 37 C.F.R. § 42.51(b)(2)(i), Patent Owner Dynapass IP Holdings
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`LLC (“Patent Owner”) requests that the Board order Petitioner to produce the
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`information
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`requested
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`in Patent Owner’s Discovery Requests
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`(EX2002)
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`(“Requested Discovery”). The Board authorized Patent Owner to file this motion
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`by close of business on March 29. EX2001.
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`I.
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`Introduction
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`The Requested Discovery is narrowly tailored to two simple questions: (1)
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`has Petitioner ever been a direct or indirect member of Unified Patents? (2) If so,
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`when? The answers to those questions are highly relevant to the first factor of
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`General Plastic because there is likely a material relationship between Petitioner and
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`Unified Patents that weighs in favor of denying institution of this follow-on petition.
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`Unified Patents had already filed a petition for inter partes review of the same patent
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`subject to this proceeding (IPR2023-00425) eight months before Petitioner filed this
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`follow-on Petition, and Petitioner was able to review the Board’s institution decision
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`in the Unified IPR for two months before filing this follow-on Petition. Petitioner
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`even concedes that its instant Petition “substantially adopts the unpatentability
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`grounds and arguments raised in” IPR2023-00425, supposedly “eliminating the need
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`for the Board to re-analyze” independent claims 1 and 5. Pet., p. 1.
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`1
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`IPR2024-00283
`Patent 6,993,658
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`Petitioner’s response to the Requested Discovery is telling—the world’s
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`largest online retailer doth protest too much. Rather than litigate on the merits
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`related to its apparent relationship with Unified Patents, Petitioner has unfortunately
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`chosen to withhold highly relevant information from the Board and Patent Owner.
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`Fortunately, however, the Board has the authority to order Petitioner to provide the
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`Requested Discovery. Patent Owner respectfully submits that the Board should
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`exercise that authority for the following reasons.
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`II. The Requested Discovery Will Likely Show a Material Relationship
`Between Petitioner and Unified Patents That Is Relevant to the First
`General Plastic Factor.
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`The Board evaluates the General Plastic factors when determining whether to
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`exercise its discretion to deny follow-on petitions. See General Plastic Industrial
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`Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 8-10 (P.T.A.B.
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`Sep. 6, 2017) (precedential). The first factor considers “whether the same petitioner
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`previously filed a petition directed to the same claims of the same patent.” Id. at 9.
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`But the first factor is not limited to the same petitioner when there is a relationship
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`between different petitioners. See Valve Corp. v. Electronic Scripting Products,
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`Inc., IPR2019-00062, -00063, -00084, Paper 11 at 2 (P.T.A.B. Apr. 2, 2019) (“when
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`different petitioners challenge the same patent, we consider any relationship between
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`those petitioners when weighing the General Plastic factors.”). That is the case here
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`because, as discussed in further detail below, publicly available information shows
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`IPR2024-00283
`Patent 6,993,658
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`a high likelihood that Petitioner is a member of Unified Patents. And based on the
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`relative timing between the two petitions, several additional General Plastic factors
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`weigh in favor of denying the instant Petition.
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`III. The Requested Discovery Is Necessary in the Interest of Justice.
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`The Requested Discovery satisfies each of the Garmin factors, so it is
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`necessary in the interest of justice. 37 C.F.R. § 42.51(b)(2)(i); Garmin Int’l, Inc. v.
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`Cuozzo Speed Techs. LLC, No. IPR2012-00001, Paper 26 at 6-7 (P.T.A.B. Mar. 5,
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`2013) (precedential).
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`A. Garmin Factor 1
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`Petitioner’s behavior alone indicates that it is likely a member of Unified
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`Patents—Petitioner could have simply answered “no” if it was not a member. See
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`EX2003. Beyond that, however, publicly available information shows a high
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`likelihood that Petitioner is a member of Unified Patents. Unified Patents is one of
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`the most prolific filers of IPRs. See, e.g., EX2004. And the patent owner in
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`IPR2020-01201 established, that as of September 19, 2020, more than 17% of all of
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`the IPRs filed by Unified Patents were directed to patents asserted against Facebook
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`or Amazon. Unified Patents LLC v. MasterObjects, Inc., IPR2020-01201, Paper 12,
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`pp. 58-59 (P.T.A.B. Oct. 16, 2020). More recently, Unified Patents has filed IPRs
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`on patents that Amazon is litigating in two other cases: Patent Owner’s case
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`3
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`IPR2024-00283
`Patent 6,993,658
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`asserting the ’658 Patent, and VideoLabs, Inc. et al v. Amazon.com, Inc. et al, No.
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`6:22-cv-00079 (W.D. Tex.). Accordingly, it is highly likely that the Requested
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`Discovery will uncover information that is highly relevant to the General Plastic
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`analysis.
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`B. Garmin Factor 2
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`The Requested Discovery seeks neither Petitioner’s litigation positions nor
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`the underlying basis for those positions. See Ex. 2002; see also Garmin, Paper 26
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`at 6. Patent Owner seeks the Requested Discovery to provide a complete record to
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`the Board when it evaluates the General Plastic factors to determine whether to
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`exercise its discretion to deny Petitioner’s follow-on petition. See General Plastic,
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`IPR2016-01357, Paper 19 at 8-10; Valve, IPR2019-00062, -00063, -00084, Paper 11
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`at 2.
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`C. Garmin Factor 3
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`The Requested Discovery cannot be obtained through other means. Petitioner
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`refuses to provide the Requested Discovery, and Patent Owner understands that
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`Unified Patents does not publish a complete list of its members. Although publicly
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`available information shows a high likelihood that Petitioner is a member of Unified
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`Patents—as discussed for Garmin factor 1—only Petitioner or Unified Patents can
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`4
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`confirm that such a relationship exists. Of those two entities, only Petitioner is a
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`IPR2024-00283
`Patent 6,993,658
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`party to this proceeding.
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`D. Garmin Factor 4
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`The Requested Discovery consists of two interrogatories narrowly tailored to
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`the question of whether Petitioner has ever been a direct or indirect member of
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`Unified Patents. Given the straightforward nature of the two interrogatories, neither
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`definitions nor instructions are strictly necessary. But Patent Owner includes
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`definitions and instructions in the Requested Discovery to avoid any confusion or
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`further delay by Petitioner.
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`E. Garmin Factor 5
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`The Requested Discovery is not overly burdensome to answer. The first
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`interrogatory merely requires a yes/no answer. Ex. 2002. To the extent Petitioner’s
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`answer to the first interrogatory is “yes,” the second interrogatory can be answered
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`with a date range. Id. To the extent Petitioner argues that the Requested Discovery
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`is overly burdensome due to confidentiality concerns, no such concerns exist
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`because Unified Patents itself has previously identified members in publicly filed
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`pleadings before the PTAB. See, e.g., Unified Patents, LLC v. Gesture Technology
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`Partners, LLC, IPR2021-00917, Paper 7, p. 1, n. 2 (P.T.A.B. Sep. 22, 2021).
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`Alternatively, the Requested Discovery could be disclosed under a Protective Order.
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`5
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`IPR2024-00283
`Patent 6,993,658
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`By: /John Wittenzellner/
`John Wittenzellner
`USPTO Registration No. 61,662
`Counsel for Patent Owner
`Dynapass IP Holdings LLC
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`IPR2024-00283
`Patent 6,993,658
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on March 29, 2024,
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`the foregoing document was served on counsel of record for Petitioners by filing this
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`document through the End-to-End System, as well as via electronic mail to counsel
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`of record for Petitioner at the following addresses:
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`Alexander B. Stein (alexander.stein@morganlewis.com)
`Ahren C. Hsu-Hoffman (Ahren.hsu-hoffman@morganlewis.com)
`Austin L. Zuck (Austin.zuck@morganlewis.com)
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`Respectfully submitted,
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`By: /John Wittenzellner/
`John Wittenzellner
`USPTO Registration No. 61,662
`Counsel for Patent Owner
`Dynapass IP Holdings LLC
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`7
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