`Trials@uspto.gov
`Entered: April 14, 2016
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMX, LLC,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00572 (Patent 9,049,019 B2)
`Case IPR2016-00573 (Patent 9,019,838 B2)1
`_______________
`
`
`
`Before KARL D. EASTHOM, GREGG I. ANDERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`ORDER
`Authorizing Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`
`
`1 We exercise our discretion to issue this order in each case using a joint
`caption. Unless otherwise authorized, the parties are not permitted to use a
`joint caption.
`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9,019,838 B2)
`
`
`INTRODUCTION
`I.
`On April 13, 2016, Judges Easthom, Anderson, and Weinschenk held
`a telephone conference call with counsel for AMX, LLC (“Petitioner”) and
`counsel for ChriMar Systems, Inc. (“Patent Owner”). A court reporter was
`present on the conference call. This order summarizes statements made
`during the conference call. A more complete record may be found in the
`court reporter’s transcript, which is to be filed by Patent Owner as an
`exhibit.
`
`II. ANALYSIS
`Patent Owner requested authorization to file a motion for additional
`discovery relating to whether certain parties should have been identified by
`Petitioner as real parties in interest. During the conference call, Patent
`Owner argued, inter alia, that certain parties may be obligated to indemnify
`Petitioner in connection with an ongoing district court case, and, thus, may
`have funded, directed, or controlled the Petition. Petitioner argued that, even
`if such indemnification obligations exist, none of the identified parties
`funded, directed, or controlled the Petition. After hearing the respective
`positions of the parties, we authorized Patent Owner to file a motion for
`additional discovery of no more than 10 pages, due no later than April 20,
`2016. We also authorized Petitioner to file an opposition to the motion of no
`more than 10 pages, due no later than April 27, 2016.
`We directed Patent Owner to Garmin Int’l, Inc. v. Cuozzo Speed
`Techs. LLC, Case IPR2012-00001, slip op. at 6–16 (Paper 26) (PTAB Mar.
`5, 2013), for an explanation of the factors that we consider in connection
`with a motion for additional discovery. Patent Owner should, inter alia,
`identify in its motion the discovery being requested and explain why the
`
`2
`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9,019,838 B2)
`
`discovery is necessary in the interest of justice, specifically identifying the
`evidence already in Patent Owner’s possession tending to show beyond
`speculation that in fact something useful will be uncovered by the requested
`discovery. Patent Owner also should file as an exhibit any proposed written
`discovery requests.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s authorized motion for additional
`discovery under 37 C.F.R. § 42.51(b)(2) is due by April 20, 2016, and is
`limited to 10 pages;
`FURTHER ORDERED that Petitioner’s authorized opposition is due
`by April 27, 2016, and is also limited to 10 pages; and
`FURTHER ORDERED that no reply is authorized.
`
`
`
`
`3
`
`
`
`IPR2016-00572 (Patent 9,049,019 B2)
`IPR2016-00573 (Patent 9,019,838 B2)
`
`PETITIONER:
`Brent Hawkins
`Amol A. Parikh
`MCDERMOTT, WILL & EMERY LLP
`bhawkins@mwe.com
`amparikh@mwe.com
`
`PATENT OWNER:
`Justin S. Cohen
`THOMPSON & KNIGHT LLP
`justin.cohen@tklaw.com
`
`Richard W. Hoffman
`REISING ETHINGTON PC
`hoffmann@reising.com
`
`4
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