`571-272-7822
`
`
`
`
`
`Paper 74
`Entered: October 28, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GOOGLE LLC, ZTE (USA), INC.,
`SAMSUNG ELECTRONICS CO., LTD.,
`LG ELECTRONICS INC., HUAWEI DEVICE USA, INC.,
`HUAWEI DEVICE CO. LTD., HUAWEI TECHNOLOGIES CO. LTD.,
`HUAWEI DEVICE (DONGGUAN) CO. LTD.,
`HUAWEI INVESTMENT & HOLDING CO. LTD.,
`HUAWEI TECH. INVESTMENT CO. LTD., and
`HUAWEI DEVICE (HONG KONG) CO. LTD.,
`Petitioner,
`
`v.
`
`CYWEE GROUP LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01257 (Patent 8,552,978 B2)
` Case IPR2018-01258 (Patent 8,441,438 B2)1
`____________
`
`
`
`Before PATRICK M. BOUCHER, KAMRAN JIVANI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.123
`
`
`
`1 The parties are not authorized to use this style of caption.
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`
`At issue in these proceedings is whether Petitioner properly identified
`all real parties in interest as required by 35 U.S.C. § 312(a)(2) and whether
`the Petition is barred by 35 U.S.C. § 315(b) because a real party in interest
`or privy was served with a complaint alleging infringement more than one
`year before the Petition was filed. See Paper 402 (Patent Owner’s Motion to
`Terminate). We previously denied Patent Owner’s Motion for Additional
`Discovery related to this issue, noting that our “principal concern” with
`Patent Owner’s motion involved the understandability and degree of burden
`to answer Patent Owner’s proposed instructions. Paper 30, 8.
`In a related proceeding involving one of the petitioner parties to these
`proceedings, i.e. ZTE (USA), Inc., we granted Patent Owner’s motion for
`additional discovery, which proposed more narrowly tailored discovery
`requests appropriate for an inter partes review proceeding. ZTE (USA), Inc.
`v. CyWee Group Ltd., IPR2019-00143, Paper 20 (PTAB Aug. 13, 2019).
`Patent Owner seeks authorization to file certain fruit of that discovery in
`these proceedings under the provisions of 37 C.F.R. § 42.123(b), which
`requires a showing that the “supplemental information reasonably could not
`have been obtained earlier” and that “consideration of the supplemental
`information would be in the interests of justice.”
`On October 24, 2019, a conference call was held with the parties to
`discuss Patent Owner’s request. Patent Owner specifically identified several
`agreements, particularly related to the Mobile Application Distribution
`Agreement discussed in Patent Owner’s Motion to Terminate. Patent Owner
`also identified a privilege log that it wishes to submit. Patent Owner
`
`
`2 Citations are to IPR2018-01257. Similar papers have been filed in
`IPR2018-01258.
`
`2
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`contends that the information could not reasonably have been obtained
`earlier because it became available only as additional discovery in the
`related proceeding. Patent Owner also contends that consideration of that
`material would be in the interests of justice, given the importance of the real
`party in interest and privity issues to these proceedings.
`During the call, the parties reached general agreement on filing of the
`identified agreements in these proceedings, but did not agree on filing of the
`privilege log. In particular, the parties agree to have Patent Owner file the
`identified agreements, together with brief, nonargumentative statements
`identifying the portions of the agreements relevant to Patent Owner’s
`arguments advanced in its Motion to Terminate.3
`In light of this agreement, we authorize submission of the identified
`agreements as supplemental information under 37 C.F.R. § 123(b). We
`direct the parties to confer before submission of the identified agreements to
`ensure that both sides agree that the statements made by Patent Owner with
`its submission conform with the agreement reached during the call. The
`parties are also directed to confer regarding submission of the privilege log
`to determine whether agreement can be reached on its submission. No
`decision is made at this time by the panel whether to authorize submission of
`the privilege log.
`
`
`
`3 All petitioner parties other than Google were joined to these proceedings in
`an “understudy” role. Nevertheless, because ZTE is the only petitioner party
`to the related proceeding, we invited ZTE to comment on the issues raised
`by Patent Owner’s request to file the additional evidence in these
`proceedings. ZTE indicated that it agreed with the positions taken by
`Google.
`
`3
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`
`It is
`ORDERED that Patent Owner is authorized to file, as supplemental
`information, agreements produced as additional discovery in IPR2019-
`00143, together with brief nonargumentative statements identifying relevant
`portions of those agreements, after conferring with Petitioner; and
`FURTHER ORDERED that Patent Owner’s filing is due on or before
`November 7, 2019.
`
`
`
`
`4
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`For Petitioner:
`
`Matthew A. Smith
`Andrew S. Baluch
`SMITH BALUCH LLP
`smith@smithbaluch.com
`baluch@smithbaluch.com
`
`James Sobieraj
`Jon Beaupre
`Yeuzhong Feng
`Andres Shoffstall
`BRINKS GILSON & LIONE
`jsobieraj@brinksgilson.com
`jbeaupre@brinksgilson.com
`yfen@brinksgilson.com
`ashoffstall@brinksgilson.com
`
`Naveen Modi
`Chetan Bansal
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`chetanbansal@paulhastings.com
`
`Collin Park
`Andrew Devkar
`Jeremy Peterson
`Adam Brooke
`MORGAN LEWIS & BOCKIUS LLP
`Collin.park@morganlewis.com
`Andrew.devkar@morganlewis.com
`jpeterson@morganlewis.com
`adam.brooke@morganlewis.com
`
`Kristopher Reed
`Benjamin Klein
`Norris Booth
`KILPATRICK TOWNSEND
`kreed@kilpatricktownsend.com
`
`5
`
`
`
`IPR2018-01257 (Patent 8,552,978 B2)
`IPR2018-01258 (Patent 8,441,438 B2)
`
`bkleinman@kilpatricktownsend.com
`nboothe@kilpatricktownsend.com
`
`
`
`
`For Patent Owner:
`
`Jay P. Kesan
`DIMURO GINSBERG PC-DGKEYIP GROUP
`jkesan@dimuro.com
`
`Ari Rafilson
`Shore Chan DePumpo LLP
`arafilson@shorechan.com
`
`6
`
`