In its Order, the Board authorized Patent Owner to file a Motion for Additional Discovery and authorized Petitioner to file an Opposition to Patent Owner’s Motion for Additional Discovery, with each of these papers not to exceed 10 pages of argument. No reply to Petitioner’s Opposition was authorized.
Patent Owner had requested a teleconference to discuss authorization to file a motion for additional discovery. According to Patent Owner, Petitioner should have identified Google, Inc. as a real party in interest in IPR2014-00717 and IPR2014-00735 because, as argued by Patent Owner, a recently discovered mobile application distribution agreement (MADA) between Google and at least one of the Petitioner entities constitutes circumstantial evidence that Google is a real party-in-interest. Patent Owner argued that in the MADA, Google indemnified one of the Petitioner entities and agreed to maintain full control of related litigation. Patent Owner identified a lawsuit involving one of the Petitioner entities – Black Hills Media, LLC v. Samsung Elecs. Co., Ltd., et al., No. 2:13-cv-00379 (E.D. Tex.) – in its Mandatory Disclosures.
Petitioner asserted during the teleconference that the MADA was limited to claims resulting from allegations against Petitioner’s products, and thus did not relate to inter partes reviews or other proceedings in the U.S. Patent and Trademark Office. Petitioner also asserted that Google was not exercising control over the petitions in the subject IPR2014-00717 and IPR2014-00735 proceedings.
Citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012), which indicates that a “party that funds or directly controls an IPR or PGR petition or proceeding constitutes a real party-in-interest,” the Board authorized Patent Owner to file a Motion for Additional Discovery. In granting such authorization, the Board took into account Patent Owner’s argument that it should be permitted to discover information concerning the scope of Google’s involvement in the subject proceedings “[i]n view of the existence of this lawsuit and the alleged indemnification requirement in the MADA.” As required by the Board, Patent Owner’s Motion for Additional Discovery should explain why granting the motion is in the interest of justice; should identify with particularity the specific discovery being sought; and should address each of the factors identified by the Board in Garmin International, Inc. et. al. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013).
Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC v. Black Hills Media, LLC, IPR2014-00717
Paper 8: Order Concerning Motion for Additional Discovery
Dated: August 7, 2014
Patent: 6,108,686
Before: Brian J. McNamara, David C. McKone, and Frances L. Ippolito
Written by: McNamara
Related Proceedings: IPR2014-00735; Black Hills Media, LLC v. Samsung Elecs. Co., Ltd., et al., No. 2:13-cv-00379 (E.D. Tex.)