`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`NINTENDO CO., LTD.,
`
`and NINTENDO OF AMERICA INC.,
`
`Petitioners
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`
`Patent Owner
`
`
`____________________
`Case IPR2021-01338
`U.S. Patent No. 6,411,941
`____________________
`
`
`PETITIONERS’ UNOPPOSED MOTION FOR
`ADDITIONAL DISCOVERY
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Case IPR2021-01338
`U.S. Patent No. 6,411,941
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`STATEMENT OF THE FACTS .................................................................... 1
`THE PARTIES HAVE REACHED AN AGREEMENT FOR PATENT
`OWNER TO PRODUCE ADDITIONAL DOCUMENTS BUT REQUIRE
`ACTION FROM THE BOARD. .................................................................... 2
`III. THE INTERESTS OF JUSTICE SUPPORT GRANTING ADDITIONAL
`DISCOVERY. ................................................................................................ 3
`A. Garmin Factor 1: The requested discovery is based on more
`than a mere possibility of finding something useful. ............................ 4
`Garmin Factor 2: The requested discovery does not seek
`Ancora’s litigation positions or the basis for those positions. .............. 4
`Garmin Factor 3: The information cannot reasonably be
`generated without the discovery request. .............................................. 4
`D. Garmin Factor 4: The requested discovery
`is easily
`understandable. ...................................................................................... 5
`Garmin Factor 5: The requested discovery is not overly
`burdensome for Patent Owner to answer. ............................................. 5
`IV. CONCLUSION ............................................................................................... 5
`
`
`B.
`
`C.
`
`E.
`
`-i-
`
`
`
`Case IPR2021-01338
`U.S. Patent No. 6,411,941
`
`
`EXHIBIT LIST
`
`-ii-
`
`Ex. 1012
`
`Ex. 1013
`
`Exhibit No. Description
`U.S. Patent No. 6,411,941 to Mullor et al. (“’941 Patent”)
`Ex. 1001
`Image File Wrapper of U.S. Patent No. 6,411,941 (“File History”)
`Ex. 1002
`Declaration of Andrew Wolfe, Ph.D. (“Wolfe Decl.”)
`Ex. 1003
`U.S. Patent No. 4,658,093 (“Hellman”)
`Ex. 1004
`U.S. Patent No. 5,892,906 (“Chou”)
`Ex. 1005
`U.S. Patent No. 5,933,498 (“Schneck”)
`Ex. 1006
`Reserved
`Ex. 1007
`Reserved
`Ex. 1008
`Reserved
`Ex. 1009
`Reserved
`Ex. 1010
`Ex. 1011
`Claim Construction Order, Ancora Techs., Inc. v. Apple Inc., No.
`4:11-cv-06357 (N.D. Cal. Dec. 31, 2012) (ECF No. 107).
`Final Claim Constructions of the Court, Ancora Techs., Inc. v. LG
`Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. June 2, 2020) (ECF No.
`69).
`Supplemental Claim Construction Order, Ancora Techs., Inc. v. LG
`Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. Aug. 19, 2020) (ECF
`No. 93).
`Civil Minutes re Telephonic Markman Hearing, Ancora Techs., Inc.
`v. TCT Mobile (US), Inc., No. 8:19-cv-02192 (C.D. Cal. Nov. 12,
`2020) (ECF No. 66) (attaching “The Court’s Final Ruling on Claim
`Construction (Markman) Hearing,” but also ordering further meet
`and confer on subject).
`Civil Minutes re Telephonic Markman Hearing, Ancora Techs., Inc.
`v. TCT Mobile (US), Inc., No. 8:19-cv-02192 (C.D. Cal. Nov. 19,
`2020) (ECF No. 69) (confirming no change to “The Court’s Final
`Ruling on Claim Construction (Markman) Hearing”).
`Ex. 1016 Decision Granting Institution of Inter Partes Review, TCT Mobile
`(US) Inc. v. Ancora Technologies, Inc., No. IPR2020-01609 (Feb.
`
`Ex. 1014
`
`Ex. 1015
`
`
`
`Case IPR2021-01338
`U.S. Patent No. 6,411,941
`
`
`16, 2021) (Paper No. 7) (“TCL Institution Decision”).
`Ex. 1017 Decision Granting Institution of Inter Partes Review, Sony Mobile
`Commc’ns AB v. Ancora Technologies, Inc., No. IPR2021-00663
`(June 10, 2021) (Paper No. 17) (“Sony Institution Decision”).
`NEW EXHIBIT
`Board Email Authorizing Motion For Additional Discovery, May
`27, 2022
`
`Ex. 1018
`
`-iii-
`
`
`
`Nintendo Co., Ltd. and Nintendo of America Inc. (“Petitioners”) seek
`
`Case IPR2021-01338
`U.S. Patent No. 6,411,941
`
`
`production of all unproduced licenses or settlement agreements involving the
`
`challenged ’941 patent, including at least the additional unproduced licenses that
`
`were explicitly cited by Patent Owner and its declarant in its papers. Patent Owner
`
`has alleged that it has not produced all of its agreements involving the ’941 patent
`
`because of confidentiality provisions associated with those agreements. But in a
`
`meet-and-confer preceding this motion, Patent Owner said it would not oppose this
`
`motion requesting an order requiring it to produce its additional ’941 patent
`
`licenses as long as they are subject to the proposed protective order (Ex. 2038).
`
`Consistent with this agreement between Petitioners and Patent Owner, Petitioners
`
`submit this targeted additional discovery request under 37 C.F.R. § 42.51(b)(2),
`
`which the Board authorized by email dated May 25, 2022. EX1018. As shown
`
`below, the motion satisfies all five “Garmin factors” set forth in Garmin Int’l Inc.
`
`v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper No. 26, at 6–7 (P.T.A.B. Mar.
`
`5, 2013) (precedential).
`
`I.
`
`STATEMENT OF THE FACTS
`In its POR, Patent Owner argues that objective evidence in the form of
`
`certain licenses for the challenged ’941 patent support its non-obviousness
`
`arguments. POR, 66-70. In support, Patent Owner selectively produced three
`
`-1-
`
`
`
`licenses under the Protective Order. See EX2029, EX2031, EX2032 (all designed
`
`Case IPR2021-01338
`U.S. Patent No. 6,411,941
`
`
`as Confidential and produced under proposed protective order EX2038).
`
`In addition to these produced licenses, Patent Owner also references certain
`
`additional unproduced licenses in its POR. See POR [Confidential], 69-70.
`
`Moreover, Patent Owner’s declarant also explicitly confirmed the existence of
`
`additional licenses other than those produced so far. See EX2030 [Confidential],
`
`¶ 7.
`
`During a meet-and-confer on May 25, Patent Owner represented that
`
`confidentiality provisions of certain license agreements prevent it from producing
`
`the additional licenses absent an order from an official tribunal. EX1018.
`
`II. THE PARTIES HAVE REACHED AN AGREEMENT FOR PATENT
`OWNER TO PRODUCE ADDITIONAL DOCUMENTS BUT
`REQUIRE ACTION FROM THE BOARD.
`Patent Owner has agreed not to oppose this motion so long as the requested
`
`documents will be subject to the proposed protective order (Ex. 2038), and will
`
`produce the requested licenses upon entry of an order from the Board in this
`
`proceeding. Board’s Email, EX1018. The Board’s grant of this motion is therefore
`
`merely a condition to the parties’ agreement. This alone should be sufficient for the
`
`Board to grant the motion. 37 C.F.R. § 41.51(b)(2)(i) (“The parties may agree to
`
`additional discovery between themselves”).
`
`-2-
`
`
`
`Case IPR2021-01338
`U.S. Patent No. 6,411,941
`
`
`III. THE INTERESTS OF JUSTICE SUPPORT GRANTING
`ADDITIONAL DISCOVERY.
`The Garmin factors also support granting this motion.
`
`As Patent Owner has itself confirmed, the three licenses produced by Patent
`
`Owner do not represent the full universe of licenses or settlement agreements
`
`involving the ’941 patent. Patent Owner characterizes these additional unproduced
`
`licenses, along with the already produced licenses, as “confirm[ing] the value of
`
`the ’941 patent.” POR [Confidential], 70. In support, Patent Owner’s declarant
`
`further stated the total amount of licensing revenue from both the produced and
`
`unproduced licenses. EX2030 [Confidential], ¶ 7.
`
`Without additional discovery, Patent Owner’s unverified statements would
`
`be the final word on this issue. Petitioners would be unable to evaluate or rebut
`
`Patent Owner’s characterizations. Any unproduced licenses, or settlement
`
`agreements involving the ’941 patent that did not result in a license, are necessary
`
`for Petitioners to fully evaluate Patent Owner’s objective-indicia arguments.
`
`Justice is not served by allowing Patent Owner to selectively produce evidence that
`
`allegedly supports patentability, but withhold potentially conflicting evidence of
`
`the same character. This is especially true where the Patent Owner is undoubtedly
`
`in possession of the withheld evidence. Accordingly, discovery of any unproduced
`
`licenses (or settlement agreements that did not result in a license) is necessary to
`
`-3-
`
`
`
`permit Petitioners to fully develop its rebuttal to Patent Owner’s objective-indicia
`
`Case IPR2021-01338
`U.S. Patent No. 6,411,941
`
`
`arguments.
`
`All five Garmin factors weigh in favor of granting this additional discovery.
`
`A. Garmin Factor 1: The requested discovery is based on more than
`a mere possibility of finding something useful.
`The requested discovery is limited to any unproduced licenses or settlement
`
`agreements involving the challenged ’941 patent, including at least the additional
`
`licenses specifically identified by Patent Owner’s declarant. Additional
`
`unproduced licenses exist and Patent Owner currently possesses them. Their
`
`production would be useful to complete the record for this proceeding and permit
`
`Petitioners the opportunity to fully respond to Patent Owner’s objective evidence
`
`arguments. Petitioners cannot adequately rebut Patent Owner’s arguments without
`
`reviewing all license agreements involving the ’941 patent.
`
`B. Garmin Factor 2: The requested discovery does not seek Ancora’s
`litigation positions or the basis for those positions.
`The requested documents contain factual evidence related to Patent Owner’s
`
`claim that objective indicia of non-obviousness support its patentability arguments.
`
`The documents are not believed to include Patent Owner’s litigation positions (or
`
`the basis for such positions).
`
`C. Garmin Factor 3: The information cannot reasonably be
`generated without the discovery request.
`The requested documents are Patent Owner’s confidential documents and
`
`-4-
`
`
`
`Petitioners are not currently aware of a way to obtain them from any other source
`
`Case IPR2021-01338
`U.S. Patent No. 6,411,941
`
`
`without this discovery request. Moreover, the documents can be produced under
`
`the current proposed protective order (not yet granted), which provides additional
`
`confidentiality protections.
`
`D. Garmin Factor 4: The requested discovery is easily
`understandable.
`The requested discovery is easily understandable because Patent Owner
`
`itself has specifically identified at least some of the requested documents in
`
`EX2030 and references them in the POR. The request for all unproduced licenses
`
`or settlement agreements is clear on its face.
`
`E. Garmin Factor 5: The requested discovery is not overly
`burdensome for Patent Owner to answer.
`The requested discovery is limited to specific documents either confirmed to
`
`exist by Patent Owner, or very likely to exist. Patent Owner is already in
`
`possession of the documents and has already produced related documents. Patent
`
`Owner therefore has limited, if any, search or production burden responding to this
`
`request. And the current proposed protective order, once granted, will be in place
`
`to protect confidentiality of the agreements. Moreover, there should be no impact
`
`on the timing of the IPR as long as the documents are timely produced.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioners respectfully ask the Board to grant
`
`-5-
`
`
`
`Petitioners’ motion for additional discovery and that it order Patent Owner to
`
`Case IPR2021-01338
`U.S. Patent No. 6,411,941
`
`
`produce all unproduced licenses or settlement agreement involving the challenged
`
`’941 patent, including at least the additional unproduced licenses that were
`
`explicitly cited by Patent Owner and its declarant in its papers.
`
`
`
`Date: June 6, 2022
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`/Jerry A. Riedinger/
`Jerry A. Riedinger, Reg. No. 30,582
`Attorney for Petitioners Nintendo Co., Ltd.
`and Nintendo of America Inc.
`
`PERKINS COIE LLP
`1201 3rd Ave., #4900
`Seattle, WA 98101
`(206) 359-8664
`
`
`
`-6-
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`I certify that the above-captioned PETITIONERS’ MOTION FOR
`
`Case IPR2021-01338
`U.S. Patent No. 6,411,941
`
`
`ADDITIONAL DISCOVERY was served in its entirety on June 6, 2022 upon the
`
`following parties via electronic mail:
`
`David A. Gosse
`Nicholas T. Peters
`Karen J. Wang
`FITCH, EVEN, TABIN & FLANNERY LLP
`ancora-ipr@fitcheven.com
`dgosse@fitcheven.com
`ntpete@fitcheven.com
`kwang@fitcheven.com
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`/Anita Chou/
`Anita Chou
`Paralegal
`
`
`
`
`
`
`
`
`
`Date: June 6, 2022
`
`
`
`
`
`
`
`
`18433239.1
`
`
`
`
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