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`
`
`
` Paper 48
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`
` Entered: June 23, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`ASKELADDEN LLC,
`Petitioner,
`
`v.
`
`SEAN I. MCGHIE and BRIAN BUCHHEIT,
`Patent Owner.
`____________
`
`Cases IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)1
`____________
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`1 This Decision addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one Decision to be filed in each case. The
`parties are not authorized to use this style heading.
`
`
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`
`
`
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)
`
`I. INTRODUCTION
`
`Patent Owner, Sean I. McGhie and Brian Buchheit, filed a Motion for
`
`Additional Discovery in each proceeding, relating to whether owning banks
`(“Member Banks”) of The Clearing House Payments Company, L.L.C.
`(“PayCo”) and The Clearing House Association (“The Association”) are real
`parties-in-interest. Paper 472 (“Mot.” or “Motion”). Petitioner filed an
`opposition. Paper 49 (“Opp.” or “Opposition”). Patent Owner filed a reply.
`Paper 53 (“Reply”).
`Patent Owner contends that Petitioner failed to name the Member
`Banks and The Association as real parties-in-interest. Id. at 2. To support
`the contention, Patent Owner seeks additional discovery as follows (id. at 2,
`5–7):
`
`Production Request No. 1: Names and roles of each individual
`employee/committee member/officer/director of Petitioner’s
`real parties-in-interest who is an employee/committee
`member/officer/director of Member Banks or The Association
`between September 2014 and May 2015.
`
`Production Request No. 2: Relative percentage or level of
`funding, either directly or indirectly, towards the inter partes
`reviews provided by Member Banks.
`
`Production Request No. 3: Timelines associated with the inter
`partes reviews, including the exact date that the Executive
`committee of Askeladden approved challenging each patent
`involved in each inter partes review; start date the Petitioner’s
`law firm was hired to prepare each petition for the inter partes
`reviews; a date prior art to be used in the proceedings was
`determined; a date an initial draft of the claims in each
`
`
`2 Citations are to IPR2015-00122.
`
`2
`
`
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`
`
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)
`
`proceeding was mapped to prior art by the law firm; a date a
`draft including a claim mapping to challenged art was
`submitted to expert witness for analysis; a date the expert
`witness finalized his analysis; a date the final petition was
`submitted to Askeladden for approval; and disclosure of any
`payment instances over $1000 for work utilized in the
`proceedings that was performed by Petitioner’s firm or by
`Petitioner’s expert that was paid for by any entity other than
`Askeladden.
`
`II. ANALYSIS
`
`Discovery is available for the deposition of witnesses submitting
`affidavits or declarations and for “what is otherwise necessary in the interest
`of justice.” 35 U.S.C. § 316(a)(5); see also 37 C.F.R. § 42.51(b)(2)(“The
`moving party must show that such additional discovery is in the interest of
`justice . . . .”). Clear from the legislative history is that discovery should be
`limited, and that the PTO should be conservative in its grant of additional
`discovery in order to meet time imposed deadlines. 154 Cong. Rec. S9988-
`89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl).
`As explained in the order authorizing Patent Owner’s Motion for
`Additional Discovery, the factors set forth in Garmin International, Inc. v.
`Cuozzo Speed Technologies. LLC, Case IPR2012-00001 (PTAB Mar. 13,
`2013) (Paper 26) are important factors in determining whether a discovery
`request meets the statutory and regulatory necessary “in the interest of
`justice” standard. Paper 39. Patent Owner argues that each discovery
`request complies with the Garmin factors. Mot. 2–8.
`
`
`
`
`
`3
`
`
`
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00137 (Patent 8,297,502)
`IPR2015-00124 (Patent 8,540,152)
`
`Production Request 1
`
`Patent Owner argues that the requested additional discovery is more
`than a mere allegation, is useful, and is not overly burdensome. Mot. 2–5.
`Patent Owner, however, does not explain how that is so. As pointed out by
`Petitioner, Patent Owner’s request for all of the names and roles of each
`individual of Petitioner’s real parties-in-interest who is also an
`employee/committee member/officer/director of Member Banks or The
`Association is broad and potentially would yield information that would not
`be useful at all to these proceedings. Opp. 2–3. As explained by Petitioner
`(id.), the request is so broad that it would include, for example, the name of
`an employee of a Member Bank who is a “committee member” and
`participates in a PayCo committee concerning banking regulatory matters,
`which would have nothing to do with the proceedings before us. Such a
`request would not be useful, is overly broad, and would place an undue
`burden on Petitioner. We are not persuaded that Production Request 1 is
`necessary in the interest of justice.
`Production Request 2
`
`Patent Owner argues that record evidence indicates that funding for
`the proceedings was provided from Member Banks, directing attention to
`IPR2015-00122, Paper 14, 15. Mot. 6. If Patent Owner believes it already
`has evidence that tends to support its position, then there would be no
`occasion to grant additional discovery with respect to production request 2.
`As set forth in Garmin, information a party can reasonably assemble or
`figure out without a discovery request would not be in the interest of justice
`to have produced by the other party. In any event, and as explained by
`
`4
`
`
`
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`
`Petitioner (Opp. 5–6), evidence tending to show that Member Banks did not
`fund any of the proceedings has been of record in these proceedings before
`the filing of the Motion for Additional Discovery. Patent Owner, however,
`does not discuss or explain such evidence. Thus, we are not persuaded that
`Production Request 2 is necessary in the interest of justice.
`Production Request 3
`
`Patent Owner does not explain cogently why it seeks all of the
`
`timelines it requests, and how such timelines are in the interest of justice, to
`any real party-in-interest inquiry. For example, Patent Owner requests the
`date an initial draft of the claims in each proceeding was mapped to prior art
`by Petitioner’s law firm, but does not explain how such information, if
`provided, would be useful. We have reviewed each of the timeline requests,
`but because Patent Owner does not explain why each such request would be
`useful, and we do not see how any would be useful, we will not grant such
`requests.
`Patent Owner also requests the disclosure of any payment instances
`over $1000 for work utilized in the proceedings that was performed by
`Petitioner’s firm or by Petitioner’s expert that was paid for by any entity
`other than Askeladden. Mot. 7. This request appears to us to be similar to
`Production Request 2. For reasons provided above with respect to
`Production Request 2, we are not persuaded that discovery of the requested
`payment instances is necessary in the interest of justice. For all of the above
`reasons, we are not persuaded that Production Request 3 is necessary in the
`interest of justice.
`
`
`
`5
`
`
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`
`
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)
`
`III. CONCLUSION
`
`For at least the reasons discussed above, we conclude that Patent
`Owner has not met its burden to show that the additional discovery is
`necessary in the interest of justice.
`
`IV. ORDER
`
`It is
`ORDERED that Patent Owner’s Motions for Additional Discovery are
`denied.
`
`PETITIONER:
`
`Robert H. Fischer
`AskeladdenIPR@fchs.com
`
`Frank A. DeLucia
`AskeladdenIPR@fchs.com
`
`Stephen Yam
`AskeladdenIPR@fchs.com
`
`Justin Oliver
`joliver@fchs.com
`
`PATENT OWNER:
`
`Brian Buchheit
`bbuchheit@gmail.com
`
`Sean McGhie
`Sean.mcghie@me.com
`
`
`
`
`6
`
`
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