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)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER CHRIMAR SYSTEMS, INC.’S
`MOTION FOR ADDITIONAL DISCOVERY UNDER 37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`1
`
`
`
`
`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)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER CHRIMAR SYSTEMS, INC.’S
`MOTION FOR ADDITIONAL DISCOVERY UNDER 37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`1
`
`
`
`I.
`
`BACKGROUND
`
`Patent Owner Chrimar Systems, Inc. (“Chrimar”) requests that the Board
`
`authorize certain targeted discovery from Petitioner AMX, LLC (“Petitioner”) as
`
`set forth in Exhibit 2002 (Chrimar’s proposed discovery requests). See 37 C.F.R.
`
`§§ 42.51 (b)(2), 42.52(a). Chrimar expects that the requested discovery, together
`
`with additional information, will show that Petitioner is the proxy of unnamed third
`
`parties Hewlett-Packard Co. (“HP”) and/or Cisco Systems, Inc. (“Cisco”), thus
`
`establishing that the petition is time-barred under 35 U.S.C. § 315(b), or the proxy
`
`of another unnamed third party, which would affect the scope of estoppel in related
`
`litigation. This motion is filed in accordance with the Board’s April 14, 2016 Order
`
`(Paper No. 8).
`
`II. ADDITIONAL DISCOVERY CONCERNING THE IDENTITY OF
`ALL REAL PARTIES IN INTEREST IS NECESSARY IN THE
`INTERESTS OF JUSTICE
`
`The Board may authorize additional discovery if it is shown to be in the
`
`“interests of justice.” 37 C.F.R. § 42.51(b)(2). Chrimar requests discovery that is
`
`necessary in the interests of justice to determine whether Petitioner is a proxy for
`
`unnamed third parties here. Chrimar believes that it can show that HP, Cisco,
`
`and/or another entity is a real party-in-interest or privy, which is critical in
`
`determining whether the IPR proceeding is timed-barred under § 315(b), or in
`
`determining the scope of the estoppel in litigation.
`
`
`
`2
`
`
`
`As shown below, Chrimar’s discovery requests satisfy the five Garmin
`
`factors applied by the Board. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`
`Case IPR2012-00001, Paper No. 26 at 6–7 (Mar. 5, 2013).
`
`in possession of evidence that shows beyond
`is
`A. Chrimar
`speculation that the requested discovery will uncover useful
`information.
`
`Chrimar satisfies the first Garmin factor, which requires more than a mere
`
`allegation or possibility that something useful will be discovered. See id. at 6–7.
`
`The following evidence tends to show that information favorable in substantive
`
`value to Chrimar on the issue of real parties-in-interest will be uncovered by the
`
`requested discovery:
`
`• HP filed a declaratory-judgment action in the Eastern District of
`
`Michigan requesting a ruling of invalidity on U.S. Patent No.
`
`9,049,019 (“the ’019 patent”). Ex. 2003.
`
`• AMX then filed a petition for inter partes review of that same ’019
`
`patent, even though AMX is not accused of infringing that patent.
`
`IPR2016-00572, Paper No. 1.
`
`• AMX hired McDermott Will & Emery, which represents HP in the
`
`Eastern District of Michigan litigation, and in another action in the
`
`Northern District of California also involving Chrimar and Chrimar’s
`
`patents, to represent it in the IPR proceedings. Exs. 2003 and 2004.
`
`
`
`3
`
`
`
`• As counsel for AMX confirmed, it is undisputed that indemnity
`
`agreements exist between AMX and third parties. Ex. 2001 at 19:7–
`
`12.
`
`• AMX sells certain products provided by another party accused of
`
`infringement in a Chrimar case—Ruckus Wireless. See Ex. 2005 at 5.
`
`• Ruckus Wireless states publicly that it indemnifies its channel
`
`partners. See Ex. 2006 at 72.
`
`• Chrimar believes that Ruckus was indemnifying AMX in litigation
`
`involving Chrimar and the same patents at issue in the IPR—as
`
`counsel for Ruckus, Matthew Yungwirth, represents Ruckus and was
`
`representing AMX—and may still be indemnifying AMX in such
`
`litigation. Exs. 2007 and 2008.
`
`B. Chrimar’s requested discovery does not seek Petitioner’s
`litigation positions or the underlying basis for those positions.
`
`Chrimar is not seeking discovery prohibited by the second Garmin factor.
`
`See Garmin, IPR2012-00001, Paper 26 at 13. Instead, Chrimar seeks limited
`
`discovery concerning whether third parties are real parties-in-interest that should
`
`have been identified in the Petition pursuant to 35 U.S.C. § 312(a)(2) (or whether
`
`any third party is a “privy” of a petitioner under 35 U.S.C. § 315(b)). To that end,
`
`the requested discovery seeks only factual information regarding third parties’
`
`relationships with Petitioner and their involvement with these proceedings, not
`
`
`
`4
`
`
`
`Petitioner’s litigation positions or the underlying basis for those positions. For
`
`example, Request for Production No. 1 seeks indemnity agreements, which are not
`
`privileged, and all of the requested interrogatories seek factual, not privileged,
`
`information about third parties’ involvement in the Chrimar Litigation and these
`
`IPRs. If, however, Petitioner contends otherwise for any discovery request, any
`
`allegedly privileged information or litigation positions can easily be redacted.
`
`C. Chrimar cannot generate equivalent information by other means.
`
`With respect to the third Garmin factor, Chrimar does not have the ability to
`
`generate equivalent discovery by any other means. Petitioner is the only one in
`
`possession of the discovery sought.
`
`To be a real party-in-interest, a third party’s participation with a petitioner
`
`need not be overt, and the evidence of an unnamed real party-in-interest may be
`
`circumstantial. Zoll Lifecor Corp. v. Philips Elec. N. Am. Corp., Case IPR2013-
`
`00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). With respect to privity, the
`
`Federal Circuit has stated an “indemnity agreement between” parties creates “a
`
`significant relationship between them,” and that “[s]uch an indemnification
`
`agreement, in other cases, has alone been enough to find privity.” Intel Corp. v.
`
`U.S. Int’l Trade Comm’n, 946 F.2d 821, 839 (Fed. Cir. 1995). Also, under
`
`controlling Federal Circuit law, Aevoe Corp. v. AE Tech. Co., 727 F.3d 1375 (Fed.
`
`Cir. 2013), a reseller of accused infringing products is in privity with a party
`
`
`
`5
`
`
`
`accused of infringement. Chrimar needs the requested discovery to obtain the
`
`direct evidence or additional circumstantial evidence of a third party’s covert role
`
`in the IPR proceeding. See Garmin, IPR2012-00001, Paper 26 at 13–14. If
`
`Petitioner is covertly acting on behalf of (or in coordination with) HP or Cisco in
`
`particular, that information is almost certainly known only to Petitioner. If HP,
`
`Cisco, or another third party, is secretly funding or controlling the IPR, that
`
`information is almost certainly known only by Petitioner. If Petitioner had some
`
`other reason to file the petition here, that information is almost certainly known
`
`only to Petitioner.
`
`For example, indemnification agreements, which AMX admits exist, are not
`
`public. Documents concerning third parties’ right to control Petitioner’s activities
`
`in this IPR also are not public. Similarly, each interrogatory seeks information
`
`known only to Petitioner. Because Chrimar cannot generate equivalent information
`
`by any other means, the third Garmin factor weighs heavily in favor of granting
`
`additional discovery.
`
`D. Chrimar’s instructions are easily understandable.
`
`With respect to the fourth Garmin factor, the instructions for the requested
`
`discovery are easily understandable, having been modeled, in part, on instructions
`
`approved by the Board in Garmin and ParkerVision. See Dr. Michael Farmwald
`
`and RPX Corp. v. ParkerVision, Inc., Case IPR2014-00946, Paper 16, Ex. 2006.
`
`
`
`6
`
`
`
`In Garmin, the Board “considered the two-page instructions for
`
`interrogatories and the two-page instructions for document requests and
`
`conclude[d] that the instructions [were] easily understandable.” Garmin, IPR2012-
`
`00001, Paper 26 at 14. Here, taken together, the Instructions and Definitions
`
`sections of the requested discovery are under two pages and are likewise easily
`
`understandable. Moreover, the Instructions here are substantially equivalent to the
`
`instructions the Board considered in ParkerVision, to which the Board held:
`
`“Patent Owner’s Requests include only three ‘Instructions’ that appear relatively
`
`standard and are easily understandable. Thus, this factor weighs in favor of
`
`granting Patent Owner’s Motion.” See ParkerVision, IPR2014-00946, Paper 25 at
`
`6 (Feb. 20, 2015).
`
`E. Chrimar’s requested discovery is not overly burdensome.
`
`The requested discovery is limited to 6 interrogatories and 4 document
`
`requests, and is “sensible and responsibly tailored according to a genuine need.”
`
`See Garmin, IPR2012-00001, Paper 26 at 14–16. For example, Request for
`
`Production No. 1 seeks indemnity agreements involving the accused products in
`
`the Chrimar Litigation or Related Matters that are applicable or potentially
`
`applicable to patent infringement claims involving any one or more of the four
`
`Chrimar patents at issue in these IPRs, and Interrogatory No. 1 seeks an
`
`identification of third parties that Petitioner has communicated with regarding
`
`
`
`7
`
`
`
`indemnification for the Chrimar Litigation or Related Matters, both of which are
`
`specifically targeted to documents and information critical to determining the real
`
`parties-in-interest and privies of Petitioner in these IPRs.
`
`Chrimar’s requests are not overly burdensome but are narrowly tailored and
`
`seek only a small amount of materials that are directly related to the real party-in-
`
`interest issue and that would be expected to be kept in very specific locations—for
`
`example, agreements with suppliers or customers are likely to be maintained in a
`
`central repository accessible to the business unit responsible for the relationship or
`
`the legal department. Petitioner’s compliance would not require substantial time,
`
`effort, or financial resources, and would not adversely impact the schedule in this
`
`review. Thus, the fifth Garmin factor weighs in favor of granting additional
`
`discovery.
`
`III. CONCLUSION
`
`For the foregoing reasons, the Board should grant Chrimar’s motion. The
`
`discovery is in the interests of justice. It would be unjust and prejudicial to Chrimar
`
`to be required to defend the validity of its patents in an IPR without the requested
`
`discovery to assist Chrimar in showing that real parties-in-interest and/or privies of
`
`the Petitioner have not been properly named in the IPR petitions. See 5 U.S.C.
`
`§ 556(d) (“A party is entitled to present his case or defense by oral or documentary
`
`evidence, to submit rebuttal evidence, and to conduct such cross-examination as
`
`
`
`8
`
`
`
`may be required for a full and true disclosure of the facts.”); 5 U.S.C. § 556(e)
`
`(“When an agency decision rests on official notice of a material fact not appearing
`
`in the evidence in the record, a party is entitled, on timely request, to an
`
`opportunity to show to the contrary.”). Chrimar therefore respectfully requests that
`
`the Board grant the requested additional discovery contained in Exhibit 2002, and
`
`require Petitioner to respond to the interrogatories and produce all responsive
`
`documents within fourteen (14) days of the Board’s Order, or at such time as the
`
`Board deems reasonable.
`
`
`
`
`
`
`
`9
`
`
`
`
`
`
`
`April 20, 2016
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
` /s/ Justin S. Cohen
`Justin S. Cohen
` Reg. No. 59,964
` Justin.Cohen@tklaw.com
`THOMPSON & KNIGHT LLP
`One Arts Plaza
`1722 Routh Street, Suite 1500
`Dallas, Texas 75201
`214.969.1700
`214.969.1751 (Fax)
`
`Richard W. Hoffmann
` Reg. No. 33,711
` Hoffmann@Reising.com
`REISING ETHINGTON PC
`755 West Big Beaver Road, Suite 1850
`Troy, Michigan 48084
`248.689.3500
`248.689.4071 (Fax)
`
`COUNSEL FOR PATENT OWNER
`CHRIMAR SYSTEMS, INC.
`
`
`
`
`
`
`
`
`
`
`10
`
`
`
`
`Certification of Service Under 37 C.F.R. § 42.6(e)(4) & 42.105(a)
`
`A copy of this MANDATORY NOTICES OF PATENT OWNER
`
`
`
`UNDER 37 C.F.R. § 42.8(a)(2) has been served on Petitioners via email at
`
`the following correspondence addresses:
`
`Brent A. Hawkins (Reg. No. 44,146)
`Amol A. Parikh (Reg. No. 60,671)
`McDermott, Will & Emery LLP
`227 West Monroe Street
`Chicago, Illinois 60606-5096
`bhawkins@mwe.com
`amparikh@mwe.com
`
`
`
`
`April 20, 2016
`
`
`
`
`
`
`
` /s/ Justin S. Cohen
`Justin S. Cohen
` Reg. No. 59,964
` Justin.Cohen@tklaw.com
`THOMPSON & KNIGHT LLP
`One Arts Plaza
`1722 Routh Street, Suite 1500
`Dallas, Texas 75201
`214.969.1700
`214.969.1751 (Fax)
`
`11
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
