IPR2024-00283
`Petitioner’s Opp. to Mot. for Additional Discovery
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
`
`AMAZON.COM, INC.,
`Petitioner,
`v.
`DYNAPASS IP HOLDINGS LLC,
`Patent Owner.
`
`______________________________
`Case No. IPR2024-00283
`
`U.S. Patent No. 6,993,658
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`Petitioner’s Opp. to Mot. for Additional Discovery
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
`
`AMAZON.COM, INC.,
`Petitioner,
`v.
`DYNAPASS IP HOLDINGS LLC,
`Patent Owner.
`
`______________________________
`Case No. IPR2024-00283
`
`U.S. Patent No. 6,993,658
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`Petitioner’s Opp. to Mot. for Additional Discovery
`IPR2024-00283
`Patent Owner’s (PO) Motion for Additional Discovery should be denied
`
`because the requested information (the “Requested Discovery”) is not in the
`
`interests of justice and would not impact the Board’s analysis of the General
`
`Plastic (“GP”) factors. The Board has repeatedly evaluated a party’s potential
`
`membership in an entity such as Unified Patents (“Unified”) and consistently
`
`refused to rely on any purported relationship to deny institution. PO asks the
`
`Board to approve additional discovery in a case where Unified filed an IPR on
`
`January 6, 2023—before the patent was even asserted against, or known about by,
`
`Amazon. PO’s speculations do not satisfy its burden of showing why its requests
`
`are in the interests of justice.
`
`Under 37 C.F.R. § 42.8, as part of its Mandatory Notices, Petitioner must
`
`only identify: (1) each real party-in-interest; (2) related matters; (3) lead and back-
`
`up counsel; and (4) service information. Petitioner has complied with these
`
`disclosure requirements (Petition at 1-5). Nothing more is required.
`
`I.
`
`PATENT OWNER’S REQUESTED DISCOVERY IS IRRELEVANT
`TO THE GENERAL PLASTIC ANALYSIS
`PO’s primary position is based on alleged relevance of its Requested
`
`Discovery to the GP factors, but it never explains why that is so. PO concludes
`
`that because the first factor considers whether there is a relationship between
`
`different petitioners and that purportedly “publicly available information shows a
`
`high likelihood that Petitioner is a member of Unified,” this would weigh in favor
`
`1
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`
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`Petitioner’s Opp. to Mot. for Additional Discovery
`IPR2024-00283
`of denying the Petition. See Mot. at 2-3. PO is incorrect. Even when membership
`
`in Unified has been confirmed under the first GP factor, the Board has still
`
`determined that the membership did not warrant discretionary denial. See, e.g.,
`
`Mercedes-Benz USA, LLC v. Carucel Invs., L.P., IPR2019-01404, Paper 12, 12
`
`(PTAB Jan. 22, 2020) (declining to find membership in Unified justified
`
`discretionary denial); Netflix Inc. & Hulu, LLC, v. DIVX, LLC, IPR2020-00052,
`
`Paper 59, 5-9 (PTAB Oct. 20, 2020) (declining to find petitioner and Unified had
`
`significant relationship after evaluating membership agreement and payments).
`
`PO’s Requested Discovery is not only irrelevant to the GP analysis, but it
`
`also does not affect Petitioner’s RPI statement. The Board has repeatedly
`
`determined that Unified’s members are not RPIs for Unified’s IPRs and PO has no
`
`explanation for why learning (1) Petitioner’s potential membership and (2) date of
`
`association could cause it to be an RPI in a different proceeding with which it has
`
`no involvement. See, e.g., Samsung Elecs. Co., Ltd. v. Memoryweb, LLC,
`
`IPR2022-00222, Ex. 2121, 43-53 (PTAB Dec. 22, 2023) (evaluating evidence and
`
`holding Petitioner was not a RPI to Unified’s proceeding); Unified Patents Inc. v.
`
`Uniloc USA, Inc., IPR2018-00199, Paper 33, 10 (PTAB May 31, 2019) (collecting
`
`cases and holding membership in Unified is not enough to make any Unified
`
`member that has been sued on a patent an RPI for any Unified challenge to that
`
`patent); Unified Patents Inc. v. Barkan Wireless IP Holdings, L.P., IPR2018-
`
`2
`
`
`
`Petitioner’s Opp. to Mot. for Additional Discovery
`IPR2024-00283
`01186, Paper 24, 11 (PTAB Dec. 7, 2018) (holding Unified was sole RPI although
`
`members may benefit from the IPR because the question is “whether Petitioner is
`
`specifically representing the unnamed party’s interest”) (emphasis original).
`
`PO’s cited cases change nothing. PO cites to Valve Corporation v.
`
`Electronic Scripting Products to support its assertion that the Requested Discovery
`
`would be relevant to the first GP factor. Valve is inapposite because, in Valve,
`
`Valve and its licensee, HTC, were co-defendants in the same district court
`
`litigation and both filed petitions challenging the same claims of the ’934 patent.
`
`IPR2019-00062, Paper 11, 9-10 (PTAB Apr. 2, 2019). The Board determined that
`
`the first GP factor weighed against institution due to the complete overlap in the
`
`challenged claims and the significant relationship between Valve and HTC as co-
`
`defendants in the same litigation. Id. at 10.
`
`Unlike Valve, Petitioner’s and Unified’s Petitions do not have complete
`
`overlap in the challenged claims and the parties are not co-defendants in district
`
`court. Petitioner challenges dependent claims 2 and 7 that were not challenged by
`
`Unified. See also Petition at 7-9. Although there is overlap in the unpatentability
`
`positions presented as to the independent claims from which claims 2 and 7
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`depend, the Board has found that this overlap is not evidence of prohibited road-
`
`mapping under GP. See Code200, UAB v. Bright Data Ltd., IPR2022-00861,
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`Paper 18, 5 (PTAB Aug. 23, 2022). This is especially true here, where efficiency
`
`3
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`
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`Petitioner’s Opp. to Mot. for Additional Discovery
`IPR2024-00283
`considerations strongly favor institution because there was no impermissible road-
`
`mapping here—instead, Petitioner’s challenge focuses on supplements to address
`
`two previously unchallenged dependent claims. See Pet. at 10. PO’s Requested
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`Discovery does not alter the GP analysis, which weighs heavily against denial.
`
`II.
`
`PATENT OWNER FAILS TO DEMONSTRATE ITS REQUESTED
`ADDITIONAL DISCOVERY IS IN THE INTEREST OF JUSTICE
`PO’s Requested Discovery should be denied because it is based purely on
`
`speculation and therefore fails to establish that there is a likelihood that useful
`
`information will be discovered. Under the first Garmin factor, the “mere
`
`allegation that something useful will be found, [is] insufficient to demonstrate that
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`the requested discovery is necessary in the interest of justice.” Garmin Int’l, Inc. v.
`
`Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, 6-7 (PTAB Mar. 5, 2013).
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`The “requester of information should already be in possession of a threshold
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`amount of evidence or reasoning tending to show beyond speculation that
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`something useful will be uncovered.” Id. at 7. In this context, “useful” does not
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`mean “merely ‘relevant’ and/or ‘admissible’” but “favorable in substantive value
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`to a contention of the party moving for discovery.” Id.
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`PO’s arguments are little more than speculation regarding Petitioner’s
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`“behavior” and other cases Unified has been involved in. See Mot. at 3-4. Indeed,
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`PO omits that the Unified IPR was filed over a month before PO filed its complaint
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`against Petitioner, which was the first time Petitioner learned of the ’658 patent.
`
`4
`
`
`
`Petitioner’s Opp. to Mot. for Additional Discovery
`IPR2024-00283
`Compare Unified Patents v. Dynapass, IPR2023-00425, Paper 1 (PTAB filed Jan.
`
`6, 2023), with Dynapass v. Amazon, No. 2:23-cv-00063 (E.D. Tex. filed Feb. 20,
`
`2023). PO’s citation to Unified’s IPR on a patent asserted by VideoLabs is again
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`nothing more than unsupported speculation. Indeed, the patent at issue was also
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`asserted against Netflix, a known Unified member. See Netflix, Inc. v. DIVX, LLC,
`
`IPR2020-00052, 2020 WL 2507408, at *4 (PTAB May 14, 2020). PO’s
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`interrogatories (which were not disclosed during the meet-and-confer process) also
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`lack precision by failing to explain what an “indirect” member is. PO’s imprecise
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`conjecture does not warrant additional discovery—particularly when, as shown
`
`above, the information does not alter the GP analysis.
`
`III. CONCLUSION
`There is no coordination or impermissible serial IPR challenges implicated
`
`here—instead, PO sued numerous defendants and now appropriately faces multiple
`
`IPR challenges filed by different parties. The Requested Discovery is not in the
`
`interests of justice and the motion should be denied.
`
`Dated: April 5, 2024
`
`Respectfully submitted,
`/ Alexander B. Stein /
`Alexander B. Stein, Reg. No. 71,397
`
`5
`
`
`
`Petitioner’s Opp. to Mot. for Additional Discovery
`IPR2024-00283
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), I certify that on April 5,
`
`2024, I caused to be served a true and correct copy of Petitioner’s Opposition to
`
`Patent Owner’s Motion for Additional Discovery by email to Patent Owner’s
`
`counsel:
`
`John Wittenzellner
`johnw@wsltrial.com
`
`Michael James Fagan, Jr.
`mfagan@wsltrial.com
`
`Fred Irvin Williams
`fwilliams@wsltrial.com
`
`Dated: April 5, 2024
`
`Respectfully submitted,
`
`/ Alexander B. Stein /
`Alexander B. Stein
`Reg. No. 71,397
`
`6
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`
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