Filed on behalf of: Askeladden LLC
`
`Paper No. ___
`Filed: June 5, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Askeladden LLC
`Petitioner
`v.
`Sean McGhie and Brian Buchheit
`Patent Owner
`_____________
`
`Case IPR2015-00124
`U.S. Patent No. 8,540,152
`
`_____________
`
`PETITIONER’S OPPOSITION
`TO
`PATENT OWNERS’ MOTION FOR DISCOVERY AUTHORIZATION
`
`
`
`Paper No. ___
`Filed: June 5, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Askeladden LLC
`Petitioner
`v.
`Sean McGhie and Brian Buchheit
`Patent Owner
`_____________
`
`Case IPR2015-00124
`U.S. Patent No. 8,540,152
`
`_____________
`
`PETITIONER’S OPPOSITION
`TO
`PATENT OWNERS’ MOTION FOR DISCOVERY AUTHORIZATION
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Introduction .................................................................................................... 1
`
`Patent Owners’ Request for Employment Lists Should Be
`Denied ............................................................................................................. 2
`
`III. Patent Owners’ Request for Funding Information Should
`Be Denied ........................................................................................................ 5
`
`IV. Patent Owners’ Request for a Timeline Should Be Denied ....................... 6
`
`V. Conclusion ...................................................................................................... 7
`
`i
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`
`
`
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`I.
`
`Introduction
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`Pursuant to the Board’s May 27, 2015 Order (Paper 38), Petitioner
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`Askeladden LLC (“Askeladden”) hereby opposes Patent Owners’ Motion for
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`Discovery Authorization (Paper 40) (“Motion”). The rules permit additional
`
`discovery only in rare instances where the moving party establishes that the
`
`discovery is necessary and would be in the interest of justice. 37 C.F.R.
`
`§§ 42.20(c), 42.51(b)(2)(i); Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`
`IPR2012-00001, Paper 26 (P.T.A.B. Mar. 5, 2013) (“Garmin”). The discovery
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`sought by Patent Owners here is improper under these standards.
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`The proposed discovery is almost entirely unrelated to real party-in-interest
`
`(“RPI”) issues, is premised at best on speculative assumptions regarding the
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`information that might be obtained, and is unnecessary in light of information
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`already disclosed or that is available to the Patent Owners. Moreover, the
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`proposed discovery will impose undue burden on Petitioner to inquire with respect
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`to parties that are not within its control—e.g., each of the twenty-six member
`
`banks of The Clearing House Payments Company L.L.C. (“PayCo”)—concerning
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`matters that are not remotely related to Askeladden’s IPR efforts. Patent Owners’
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`failure to enunciate a concise justification for their proposed discovery illustrates
`
`its improper nature and that it is not in the interest of justice.
`
`
`
`1
`
`
`
`
`
`II.
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`Patent Owners’ Request for Employment Lists Should Be Denied
`
`The Motion requests the name and role “of each individual employee/
`
`committee member/officer/director of the Acknowledged RPI who is an employee/
`
`committee member/officer/director of the Alleged RPI” (“1st Request”).1 Motion
`
`at 1. Patent Owners thus seek the names and roles of any person employed by or
`
`affiliated with PayCo and Askeladden who is also affiliated with an Alleged RPI—
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`i.e., not only with the Association, but with each of the twenty-six banks that is a
`
`member of PayCo. Patent Owners seek this information regardless of whether a
`
`person has any relationship to Askeladden or the present IPR. The interests of
`
`justice weigh against granting this request.
`
`Under the first Garmin factor, the information sought lacks “substantive
`
`value to a contention of the party moving for discovery,” and therefore will not be
`
`useful. Garmin at 6-7. The Motion fails to explain otherwise. For example, if an
`
`employee of a PayCo member bank participates in a PayCo committee concerning
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`banking regulatory matters, the identity of that person is called for by the Motion
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`even though such information is entirely irrelevant to Askeladden’s IPR activities
`
`
`1 The Motion defines (i) Askeladden and PayCo, collectively, as “Acknowledged
`
`RPI,” and (ii) “owning banks” of PayCo and The Clearing House Association (the
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`“Association”) as “Alleged RPI.” Motion at 1.
`
`2
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`
`
`
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`and would be prohibitively burdensome to identify. At best, therefore, Patent
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`Owners can only speculate that their overly broad 1st Request might reveal
`
`something relevant to RPI issues. But the first Garmin factor does not
`
`countenance such speculation, and the fifth Garmin factor does not permit
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`discovery such as this that is not “sensible and responsibly tailored according to a
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`genuine need.” Id. at 7.
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`Moreover, Patent Owners already have evidence of this sort sufficient to the
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`RPI question. Regarding control over this proceeding, Patent Owners already have
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`been provided full information about the membership of Askeladden and PayCo,
`
`their governing boards, and the lack of any involvement of PayCo’s member banks
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`in Askeladden’s IPR activities. The Reilly Declaration (Ex. 1531) and Askeladden
`
`LLC Agreement (Ex. 1533) each establish that
`
`
`
` is solely responsible for selecting patents to challenge
`
`using IPR proceedings, and for independently determining all other aspects of
`
`Askeladden’s IPR activities. Ex. 1531 ¶ 11; Ex. 1533 at 2, 8, 12. As the Patent
`
`Owners also know,
`
`
`
`. Ex. 1531 ¶ 15; Ex. 1533 at 2, 10. Petitioner further represents that
`
`
`
`
`
`
`
`3
`
`
`
`
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`concrete basis to suggest otherwise.
`
`. Patent Owners offer no
`
` also is
`
`known to Patent Owners. See Ex. 1531 at ¶ 15. So too, however, is the fact that
`
`
`
`. See Ex 1531 ¶ 11; Ex 1533 at 10.
`
`Patent Owners offer no explanation as to how their further requested
`
`discovery will alter the RPI considerations over the existing record, nor can they
`
`do so without relying solely on improper speculation. In particular, the names and
`
`roles of individuals from PayCo member banks are not relevant given that parent
`
`companies or association members are not considered RPIs, absent a showing of
`
`specific control of the proceeding in which the related corporation or association is
`
`involved. See Unified Patents Inc. v. Dragon Intellectual Property, LLC,
`
`IPR2014-01252, Paper 37, at 13 (P.T.A.B. Feb. 12, 2015); GEA Process Eng’g,
`
`Inc. v. Steuben Foods, Inc., IPR2014-00041, Paper 23, at 3-4, 6-7 (P.T.A.B. Apr.
`
`22, 2014).2
`
`
`2 The Motion refers to amicus briefs filed separately by Askeladden, The Clearing
`
`House Association and other entities, in cases unrelated to the present proceeding
`
`or to any IPR proceeding. Motion at 2. Alignment of interest in unrelated amicus
`
`
`
`4
`
`
`
`
`
`In these circumstances, Patent Owners’ assertion with respect to the third
`
`Garmin factor, namely, that they are unable to obtain the requested information by
`
`other means (Motion at 3), is misdirected. Petitioner has not “intentionally
`
`shield[ed]” Askeladden’s corporate structure and the “details of the
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`interconnections between the Alleged RPI and the Acknowledged RPI from the
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`public,” based on the Protective Order in this case. Id. Rather, under the
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`Protective Order (Papers 20, 24, 25), Patent Owners have received all pertinent
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`information relating to RPI issues—e.g., concerning Askeladden’s corporate
`
`structure and the relationships between Askeladden, PayCo, and PayCo member
`
`banks. See Paper 26; Ex. 1531; Ex. 1533.
`
`III. Patent Owners’ Request for Funding Information Should Be Denied
`Equally improper is the Motion’s second request, which seeks information
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`regarding “funding used in the Proceedings acquired from Member Banks directly
`
`or indirectly” (“2nd Request”). Motion at 4. This request is not proper under
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`Garmin factors 1 and 5, and is unnecessary in light of information already
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`provided.
`
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`positions, however, does not evidence any connection of the Association or other
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`entities with respect to Askeladden’s IPR efforts, and certainly does not suggest
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`specific control by the Association or the other entities over this proceeding.
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`5
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`
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`
`
`
`
`
`
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` E.g.,
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`.
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` .
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`
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`Petitioner has already provided evidence showing that
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`Ex. 1531 ¶ 16. Indeed, such control is within the sole discretion of
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`Accordingly, consistent with the Board’s own precedent, Patent Owners
`
`have received all pertinent information concerning Askeladden IPR funding issues
`
`relevant to RPI matters in this proceeding. See Unified Patents, IPR2014-01252,
`
`Paper 37, at 12 and Paper 39, at 5 (P.T.A.B. Feb. 12, 2015) (only control over
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`funds used to challenge specific patents in an IPR is relevant to an RPI analysis).3
`
`IV. Patent Owners’ Request for a Timeline Should Be Denied
`The Motion’s third request seeks a timeline of events involved in preparing
`
`this proceeding’s Petition, and disclosure of payments to Petitioner’s counsel and
`
`expert witness (“3rd Request”). The Motion provides no coherent reason why this
`
`information is necessary or relevant to RPI issues. Indeed, Patent Owners state
`
`
`3 The 2nd Request is also ambiguous in that it appears to seek information for IPR
`
`Proceedings other than this one. That is not proper under Garmin factors 4 and 5.
`
`6
`
`
`
`
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`only that they “reasonably question that the prepared Petitioners [sic] were initiated
`
`in September ….” Motion at 6. This speculation, which is less than
`
`comprehensible, is inadequate to justify further discovery on RPI questions.
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`In addition, here, too, Patent Owners already have all information that may
`
`be pertinent to the RPI question—viz., Askeladden was formed on June 17, 2014,
`
`and
`
`
`
`
`
`. Ex. 1531 ¶¶ 6, 13, 14.
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`The 3rd Request also is contrary to the interests of justice because it would
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`require the production of information subject to the attorney-client privilege and
`
`the attorney work product immunity doctrine.
`
`V. Conclusion
`
`
`
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`Respectfully submitted,
`
`/Frank A. DeLucia/
`Frank A. DeLucia, Jr.
`Attorney for Petitioner
`Registration No. 42,476
`
`deny the Motion.
`
`
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, New York 10104-3800
`Facsimile: (212) 218-2200
`
`7
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.105, the undersigned certifies
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`that on this date a true and correct copy of this Petitioner’s Opposition to Patent
`
`Owners’ Motion for Discovery Authorization was served via email on the Patent
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`Owner’s counsel at the following address indicated in the Patent Owner’s
`
`Mandatory Notices.
`
`
`
`bbuchheit@gmail.com
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`Dated: June 5, 2015
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`/Frank A. DeLucia/
`Frank A. DeLucia, Jr.
`Attorney for Petitioner
`Registration No. 42,476
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